WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

E. REMY MARTIN & Co. v. 域名管理35

Case No. D2015-0038

1. The Parties

The Complainant is E. REMY MARTIN & Co. of Cognac, France, represented by Nameshield, France.

The Respondent is 域名管理35 of China.

2. The Domain Name and Registrar

The disputed domain name <人头马.网址> (<xn--gmq48wd16c.xn--ses554g>) is registered with Internet Domain Name System Beijing Engineering Research Center LLC (ZDNS) (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 12, 2015. On January 12, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 14, 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 January 14, 2015, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceedings. On January 19, 2015, the Complainant submitted a request that English be the language of the proceedings. The Respondent did not comment on the language of the proceedings by the specified due date.

On January 14, 2015, the Center requested the Complainant to confirm that a copy of the Complaint had been transmitted to the Respondent in accordance with paragraphs 2(b) and 3(b)(xii) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”). On January 15, 2015, the Complainant indicated to the Center that the email address of the Respondent as confirmed by the Registrar and shown in the public WhoIs information for the disputed domain name is the same email address used by the Complainant’s representative, Nameshield. On January 19, 2015, the Center confirmed that it would use this email address in future communications with the Respondent.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 in both Chinese and English of the Complaint, and the proceedings commenced on January 22, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 11, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 12, 2015.

The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on February 24, 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.

4. Factual Background

A. Complainant

The Complainant is a company incorporated in France and the owner of an international registration, and registrations in China, Hong Kong, China, Singapore, Macau, China, Taiwan, Province of China and the European Union, for the trade mark人头马¹ (the “Trade Mark”), the earliest registration (in Hong Kong, China) dating from 1973. The Trade Mark was recognised by the Trademark Office of the State Administration for Industry & Commerce of the People’s Republic of China as a well-known trademark in China on January 15, 2010.

B. Respondent

The Respondent is apparently an entity based in China.

C. The Disputed Domain Name

The disputed domain name was registered on January 5, 2015.

D. The Website at the Disputed Domain Name

According to the Complaint’s Annexes, the disputed domain name has not been used.

5. Parties’ Contentions

A. Complainant

The Complainant made the following submissions in the Complaint.

The Complainant has been producing and selling high quality cognacs and liquors since 1724. The Complainant sells 95% of its products outside France.

The Trade Mark, which literally means “man head horse”, is the Chinese language translation of the Complainant’s Remy Martin Centaur brand, and is a well-known trade mark in China (and amongst Chinese speaking consumers worldwide).

The disputed domain name is confusingly similar to the Trade Mark.

The disputed domain name is resolved to an inactive website.

The Respondent has no rights or legitimate interests in the disputed domain name and has registered and used the disputed domain name in bad faith. Given the notoriety of the Trade Mark, the Respondent must have been aware of the Complainant’s rights in the Trade Mark prior to the registration of the disputed domain name, and there is no likely legitimate or plausible possible use by the Respondent of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1. Language of the Proceedings

The language of the Registration Agreement for the disputed domain name is Chinese. 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 proceedings shall be the language of the Registration Agreement.

Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceedings 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 proceedings. 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 proceedings.

The Complainant has requested that English be the language of the proceedings, for the following reasons:

(1) English is the language most widely used in international relations;

(2) The disputed domain name has not been used and the Complainant has no information about the Respondent;

(3) The Complainant is located in France and has no knowledge of Chinese;

(4) In order to proceed in Chinese, the Complainant would need to retain specialised translation services at a cost very likely to be higher than the overall cost of these proceedings;

(5) The Center notified the Respondent of the Complaint also in Chinese and afforded the Respondent the opportunity to file submissions in Chinese.

The Complainant also offered to translate the Complaint into Chinese if the Respondent confirmed the Respondent’s lack of knowledge of English.

The Respondent did not file a response and did not file any submissions with respect to the language of the proceedings.

In exercising its discretion to use a language other than that of the Registration Agreement, 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.

There is no evidence on the record that the Respondent is proficient in the English language.

The Panel is however mindful of the need to ensure the proceedings are conducted in a timely and cost effective manner.

The Panel notes all communications from the Center regarding the proceedings have been sent to the parties in both Chinese and English, and the Respondent has been given the opportunity to file submissions regarding the language of the proceedings. Had the Respondent filed submissions to the effect it is not sufficiently proficient in English, it is likely the Panel would have been persuaded to order that the language of the proceedings be Chinese.

In all the circumstances, however, and given in particular the Respondent has chosen not to contest the proceedings, the Panel finds it is not foreseeable that the Respondent would be unduly prejudiced, should English be adopted as the language of the proceedings.

Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceedings shall be English.

6.2. Substantive Elements of the Policy

The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail.

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 over 40 years.

The disputed domain name is identical to the Trade Mark. It comprises the Trade Mark in its entirety, together with the Chinese language generic Top-Level Domain “.网址”, meaning “Internet site”.

The Panel therefore finds that the disputed domain name is confusingly similar to the Trade Mark and 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 non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:

(i) before any notice to the respondent 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 (as an individual, business, or other organisation) has been commonly known by the domain name even if the respondent has acquired no trade mark 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 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 over 40 years. The Panel finds on the record that 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.

The Respondent has failed to show that the Respondent has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name has been used in connection with a bona fide offering of goods or services.

There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.

There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.

The Panel finds that 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 fulfils the second condition of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Given the notoriety of the Complainant and of its Trade Mark, the lack of any explanation from the Respondent, and the passive holding of the disputed domain name, the Panel has no hesitation in concluding, in all the circumstances, the requisite element of bad faith has been made out. The Panel considers it is inconceivable the Respondent was not aware of the Complainant’s well-known Trade Mark at the time it registered the disputed domain name.

The Panel is fortified in reaching its conclusion on bad faith by the fact the WhoIs information for the disputed domain name suggests the Respondent has tried to conceal its identity - the WhoIs information contains the fax and telephone numbers of the Complainant and the email address of the Complainant’s representative, and, under the item “Registrant street”, lists “法国” meaning “France” in Chinese.

The Panel therefore finds, in all the circumstances, the requisite element of bad faith has been satisfied.

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.

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 <人头马.网址> (<xn--gmq48wd16c.xn--ses554g>) be transferred to the Complainant.

Sebastian M.W. Hughes
Sole Panelist
Dated: March 10, 2015

¹ (人頭馬 in traditional Chinese characters).