WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

E. Remy Martin & C° v. Zhang Bo Wen/Shang Hai Lei Mi Jun Du Mao Yi You Xian Gong Si

Case No. D2016-0258

1. The Parties

The Complainant is E. Remy Martin & C° of Cognac, France, represented by Tmark Conseils, France.

The Respondent is Zhang Bo Wen/Shang Hai Lei Mi Jun Du Mao Yi You Xian Gong Si of Shanghai, China.

2. The Domain Name and Registrar

The disputed domain name <louisxiii-cognac.top> is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 11, 2016. On February 11, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 14, 2106, 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. In response to a notification by the Center regarding the information of the Respondent, the Complainant filed an amended Complaint on February 19, 2016.

On February 14, 2016, the Respondent sent an email to the Center indicating that it was not going to use or hold the disputed domain name and that it would release the disputed domain name. On February 15, 2016, the Complainant indicated that it did not wish to suspend the proceeding. On February 16, 2016, the Respondent expressed its willingness to transfer the disputed domain name to the Complainant.

On February 17, 2016, the Center sent an email to the Parties in both Chinese and English regarding the language of the proceeding. On February 17 and 18, 2016, the Respondent sent emails in Chinese regarding a potential settlement but did not comment on the language of the proceeding. On February 19, 2016, the Complainant requested that English be the language of the proceeding.

The Center verified that the Complaint together with 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 and 4, the Center formally notified the Respondent of the Complaint in both Chinese and English, and the proceeding commenced on February 25, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 16, 2016. On March 17, 2016, the Center informed the parties that it would proceed with panel appointment.

On March 17 and 22, 2016, the Respondent sent emails to the Center regarding the merits of this dispute. On March 22, 2016, the Complainant sent an email in reply.

The Center appointed Matthew Kennedy as the sole panelist in this matter on March 23, 2016. 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 French company that produces cognac. It uses the trademark LOUIS XIII in connection with the marketing of certain cognac collections. The Complainant owns multiple registrations of LOUIS XIII trademarks including Chinese registration no. 3176665 (LOUIS XIII box) registered in 2004; no. 3176214 (LOUIS XIII bottle) registered in 2008; no. 7624787 (LOUIS XIII DE RÉMY MARTIN RARE CASK) registered in 2010; and no. 12160294 (LOUIS XIII) registered in 2014. The Complainant owns and operates the domain name <louis-xiii.com> and has registered many other domain names including <louisxiii-cognac.asia>, <louisxiii-cognac.cn>, <louisxiii-cognac.com>, <louisxiii-cognac.hk> and <louisxiii-cognac.net>.

The Respondent is the contact person and organization listed in the WhoIs database as the registrant of the disputed domain name. The disputed domain name was registered on July 20, 2015. It does not resolve to any active website.

5. Parties’ Contentions

A. Complainant

The disputed domain name is confusingly similar to the Complainant’s well-known trademark LOUIS XIII. The disputed domain name incorporates the LOUIS XIII trademark in its entirety. The Complainant’s trademark registrations predate the disputed domain name registration. The addition of the generic Top Level Domain (“gTLD”) “.top” and the non-distinctive, generic and descriptive English word “cognac” does not avoid the likelihood of confusion between the disputed domain name and the Complainant’s trademark.

The Respondent has no rights in the disputed domain name and made no offering of goods or services or legitimate use of the disputed domain name. The LOUIS XIII trademark is well known throughout the world, including in China. The Respondent seeks to take advantage of the notoriety of the Complainant’s mark. The Respondent was not known as “Louis XIII” at the time of registration of the disputed domain name. There appears to be no legitimate reason why the Respondent would incorporate the Complainant’s well-known mark in the disputed domain name. The disputed domain name does not resolve to any functioning website. In reply to the Respondent’s email, the Complainant denied that it had authorized the Respondent to register the disputed domain name.

The disputed domain name was registered and is being used in bad faith. Given the distinctiveness, the notoriety and the premium quality of the Complainant’s trademark, products and related activities it is reasonable to infer that the Respondent has registered the domain name with full knowledge of the Complainant’s brand and for the purpose of misleading and disrupting the business of the Complainant. The disputed domain name is not actively used. The Respondent also refused to transfer the trademark free of charge.

B. Respondent

The Respondent asserts that the Complainant is the parent company of the Respondent and that the Complainant has confirmed that the disputed domain name is administered by the Respondent organization. It informs the Panel that the Respondent organization is also the registrant of the domain name <louisxiii-cognac.net.cn> and it asserts that the disputed domain name is a test for an alternative domain name. It submits screenshots of a page on that Chinese website that displays material identical to a page on the Complainant’s official website <louisxiii-cognac.com>.

6. Discussion and Findings

6.1 Language of the Proceeding

Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative 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 proceeding.” The Registrar confirmed that the Registration Agreement for the disputed domain names are in Chinese.

The Complainant requests that the language of the proceeding be English. Its main arguments are that the parties have communicated with each other in English before the commencement of this proceeding, that the disputed domain name uses Latin characters and that the Complainant does not understand Chinese at all. The Respondent did not avail itself of the opportunity that it was given to respond to the Complainant’s language request.

Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties (See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293).

The Panel observes that the Complaint in this proceeding was filed in English. Prior to the commencement of the proceeding, the Complainants’ representative sent the Respondent a cease-and-desist email on November 14, 2015, written in English, to which the Respondent replied on the same day, also in English. The Respondent sent other emails to the Complainant and to the Center on November 17, 2015, February 14 and 16, 2016, all in English. This evidence indicates that the Respondent is familiar with English, even though most of the Respondent’s other emails to the Center were in Chinese. The Panel is familiar with both Chinese and English. Therefore, the Panel considers that requiring the Complainants to translate the Complaint into Chinese would create an undue burden and delay. At the same time, the Panel notes that both parties have been able to present their respective views of the matter in dispute. Therefore, the Panel does not consider that accepting the original version of any document on file causes prejudice to either party.

Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English, and that it will accept the communications filed in Chinese without a translation.

6.2 Analysis and Findings

Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the 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

Based on the evidence submitted, the Panel finds that the Complainant has rights in registered trademarks consisting of LOUIS XIII.

The disputed domain name incorporates the Complainant’s trademark in its entirety. The disputed domain name contains the additional element “-cognac”. The Complainant describes “cognac” as a generic English term but it is protected in the European Union and elsewhere as a geographical indication denominating a certain spirit drink originating in France. In any event, it is a word that denominates a type of product, preceded by a hyphen. Therefore, the Panel finds that this additional element in the disputed domain name is not sufficient to dispel the confusing similarity of the disputed domain name to the Complainant’s trademark (see, regarding generic terms: Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110).

The disputed domain name also contains the gTLD suffix “.top” but a gTLD suffix generally has no capacity to distinguish a domain name from a trademark. (See Lego Juris A/S v. Chen Yong, WIPO Case No. D2009-1611; Dr. Ing. H.c. F. Porsche AG v. zhanglei, WIPO Case No. D2014-0080).

Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or

(ii) [the Respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the Respondent has] acquired no trademark or service mark rights; or

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

As regards the first circumstance, the disputed domain name does not resolve to any active website. The Respondent initially conceded that it was not going to use this domain name but later alleged that it is a test for an alternative to the domain name <louisxiii-cognac.net.cn>. However, it is clear that the disputed domain name is not currently in use and there is no evidence of any preparations to use it in any way. Therefore, the Panel does not consider that the facts of this dispute fall within the first circumstance of paragraph 4(c) of the Policy.

As regards the second circumstance, the Respondent’s name is “Zhang Bo Wen” and “Shang Hai Lei Mi Jun Du Mao Yi You Xian Gong Si”. The Panel notes that two characters in the latter name, 雷米 (“Lei Mi”), are a transliteration of “Rémy” which is part of the Complainant’s name. However, that is not part of the disputed domain name. There is no evidence indicating that the Respondent has been commonly known by the disputed domain name as envisaged by the second circumstance of paragraph 4(c) of the Policy.

As regards the third circumstance, the disputed domain name does not resolve to any active website. There is no allegation of any legitimate noncommercial or fair use of the disputed domain name. The Panel does not find evidence of any such use covered by the third circumstance of paragraph 4(c) of the Policy.

In summary, the Panel considers that the Complainant has prima facie discharged its burden of proof that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The burden now shifts to the Respondent to show that he does have some rights or legitimate interests.

The Respondent asserts that the Complainant is the parent company of the Respondent “Shang Hai Lei Mi Jun Du Mao Yi You Xian Gong Si”. The Respondent also implies that the Complainant has authorized the Respondent to administer the disputed domain name. However, the evidence adduced in support shows only that certain material used on a website operated by the Complainant is also used on a website operated by the Respondent. Nothing on the record of this proceeding indicates that use of that material is authorized on that other site. The Respondent adduces no evidence regarding the ownership, management or control of the Respondent “Shang Hai Lei Mi Jun Du Mao Yi You Xian Gong Si” and no evidence that would demonstrate authorization by the Complainant to register the disputed domain name. The Complainant itself denies that it has authorized the Respondent to register the disputed domain name. Therefore, based on the evidence on the record, the Panel finds that the Respondent was not authorized by the Complainant to register the disputed domain name.

Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that certain circumstances shall be evidence of the registration and use of a domain name in bad faith but these circumstances are not exhaustive.

With respect to registration, the Panel observes that the Respondent registered a domain name that entirely incorporates the Complainant’s LOUIS XIII trademark with an additional element “cognac” that specifically denominates the Complainant’s products. The disputed domain name registration postdates the Complainant’s trademark registrations, including in China, where the Respondent is located. The disputed domain name is identical to a series of domain names registered and operated by the Complainant consisting of “louisxiii-cognac” except that it is registered in a different TLD. For the reasons given in Section 6.2B above, the Panel finds that the Respondent was not authorized by the Complainant to register the disputed domain name. In view of these circumstances, the Panel finds that the Respondent’s choice to register a domain name confusingly similar to the Complainant’s trademark was deliberate.

With respect to use, the Respondent makes only passive use of the disputed domain name but this does not preclude a finding of use in bad faith (see Telstra Corporation Ltd v. Nuclear Marshmallows, WIPO Case No. D2000-0003). In the present dispute, the Complainant has a strong reputation in its trademark which is widely known, especially in the spirit drinks industry, through use in connection with its cognac. The disputed domain name includes the Complainant’s trademark in its entirety but the evidence does not show that the Respondent is authorized to use it. The inclusion of the term “cognac”, which denominates the Complainant’s products and the similarity to the format of the domain names for the Complainant’s official websites, all increase the likelihood of confusion of the disputed domain name with the Complainant. Given these circumstances and those described in Section 6.2B, the Panel finds that the Complainant has discharged its burden of demonstrating that the disputed domain name is being used in bad faith.

Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy.

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 disputed domain name <louisxiii-cognac.top> be transferred to the Complainant.

Matthew Kennedy
Sole Panelist
Date: April 6, 2016