WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
E. Remy Martin & C° v. 游丹/You Dan
Case No. D2016-0259
1. The Parties
The Complainant is E. Remy Martin & C° of Cognac, France, represented by Tmark Conseils of Paris, France.
The Respondent is 游丹/You Dan of Chengdu, Sichuan, China.
2. The Domain Name and Registrar
The disputed domain name <路易十三.公司> is registered with Hu Yi Global Information Resources (Holding) Company HongKong Limited (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 11, 2016. The same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 19, 2016, 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 February 22, 2016, the Center transmitted an email to the Parties in English and Chinese regarding the language of the proceeding. On February 23, 2016, the Complainant submitted its request that English be the language of the proceeding. The Respondent did not submit any comments by the specified due date.
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 and 4, the Center formally notified the Respondent of the Complaint in English and Chinese, and the proceeding commenced on March 1, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 21, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 22, 2016.
The Center appointed Matthew Kennedy as the sole panelist in this matter on April 5, 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. This trademark can be translated into Chinese as "路易十三" because the name "Louis" can be phonetically transcribed as "路易" and the Roman numeral "XIII" can be translated as "十三".
The Complainant owns many registrations of LOUIS XIII trademarks in multiple jurisdictions including United States registration no. 351191 (LOUIS XIII BRAND) registered in 1937; Hong Kong, China registration no. 19901426 (LOUIS XIII) registered in 1984 and Chinese registration no. 1053176 (人頭馬路易十三LOUIS XIII DE REMY MARTIN) registered in 1997. The Complainant also owns registrations of路易十三 trademarks in Macao, China, namely registration nos. N/074051, N/74052 and N/74053 (路易十三), all registered on August 13, 2014, prior to the registration of the disputed domain name. All these trademarks are registered in respect of alcoholic drinks, including cognac. The Complainant also registered many domain names including <路易十三.asia>, <路易十三.hk>, <路易十三.net>, <路易十三.tw>, <路易十三.香港>, <路易十三.网络> and <路易十三.集团 > during the period from 2011 to 2014. All but the last of these domain names were registered prior to the disputed domain name.
The Respondent is the registrant of the disputed domain name. According to the contact information in the WhoIs database, the Respondent's organization is an alcoholic drinks trading company. The disputed domain name was created on August 20, 2014 in the generic Top-Level Domain ("gTLD") ".公司", which means "company" in Chinese. It does not resolve to any active website.
5. Parties' Contentions
The Complainant alleges that the disputed domain name is identical or confusingly similar to its 路易十三 trademarks and to its LOUIS XIII trademarks. The Complainant submits that it registered the 路易十三trademarks in Macao, China in 2014 and asserts that it also registered them in Hong Kong, China in 2015. The Complainant submits a number of court judgements and administrative decisions in support of its contention that its LOUIS XIII trademarks are well-known. These include Beijing High People's Court administrative judgement (2014) 高行（知）终字no. 3557 which found that the Complainant's trademark人頭馬路易十三LOUIS XIII DE REMY MARTIN constituted a well-known trademark in China and rejected a third party application for the trademark 路易十三 in respect of pipes and other products in class 34. In the present case, the disputed domain name wholly incorporates the Complainant's 路易十三 trademark and was registered later than it. The addition of a gTLD does not avoid the likelihood of confusion between them.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant is the registered proprietor of the 路易十三 trademarks. The Respondent is not affiliated with the Complainant and is not authorized or licensed to use it. The Respondent is not known as "路易十三" or as "Louis XIII". The domain name is not actively used.
The Complainant alleges that its路易十三 and LOUIS XIII trademarks are well-known throughout the world. The Respondent is clearly aware of it. The aim of registering the disputed domain name was to take advantage of possible confusion and a possible link between that name and the Complainant's trademark rights. The Respondent did not respond to a cease-and-desist letter. The disputed domain name is not actively used.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
6.1 Language of 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 name is in Chinese.
The Complainant requests that the language of the proceeding be English. Its main arguments are that English is an international language; the Complainant does not understand Chinese; the Registrar's website provides an English version of the Registration Agreement; and knowledge of the meaning of the term "Louis XIII" allegedly indicates an understanding of the English language.
The Panel notes that all the Center's email communications with the Parties have been in both Chinese and English. The Respondent was given an opportunity to object to the Complainants' request that English be the language of the proceeding but the Respondent did not in fact object.
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 takes 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 in this proceeding the Complaint was filed in English. The Panel does not consider that any evidence on the record demonstrates that the Respondent is familiar with the English language. However, the Respondent has not expressed any wish to respond to the Complaint or otherwise to participate in this proceeding. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English.
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 or including the characters 路易十三 and that these trademark registrations predated the creation of the disputed domain name.
The disputed domain name incorporates the Complainant's 路易十三trademark in its entirety. The Complainant's trademark is the dominant element of the disputed domain name because the only additional element is the gTLD suffix ".公司". 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 issues of use, the disputed domain name does not resolve to any active website. There is no evidence of any preparations to use the disputed domain name in any way. There is no allegation of any legitimate noncommercial or fair use of the disputed domain name either. Therefore, the Panel does not consider that the facts of this dispute fall within the first or third circumstances of paragraph 4(c) of the Policy.
As regards the name by which the Respondent is known, the Respondent's name is "游丹/You Dan". 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.
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 but the Respondent did not respond to the Complaint.
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 路易十三trademark and that the disputed domain name registration postdates the Complainant's registrations of that trademark. The Complainant has registered the trademark in respect of alcoholic drinks and the Respondent's organization is evidently an alcoholic drinks trading company. Moreover, the Complainant has widely promoted the trademark in China, where the Respondent is located. Indeed, almost all the top search results for "路易十三" in the Baidu search engine refer to the Complainant's products. One of the Complainant's other trademarks, 人頭馬路易十三LOUIS XIII DE REMY MARTIN trademark, wholly incorporates the characters 路易十三 and was already well-known in China, where the Respondent is located, at the time the Respondent registered the disputed domain name. Further, the disputed domain name is identical to a series of domain names previously registered and operated by the Complainant, except that the disputed domain name is registered in a different TLD. The Complainant alleges that it did not authorize the Respondent to register the disputed domain name, and this allegation is not disputed. In view of these circumstances, the Panel is persuaded that the Respondent registered the disputed domain name in bad faith.
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 well-known in the Chinese-speaking alcoholic drinks industry, through use in connection with its cognac. The Respondent's organization is evidently an alcoholic drinks trading company and the Respondent offers no explanation as to any actual or potential use to which it would put the disputed domain name. There is no additional element in the disputed domain name other than the gTLD and the identity of the disputed domain name to the domain names for the Complainant's official websites – other than the TLDs – all increases 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.
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 <路易十三.公司> be transferred to the Complainant.
Date: April 10, 2016