WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

E. Remy Martin & C° v. Lan Qing Tian / Qingtian Lan

Case No. D2016-1567

1. The Parties

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

The Respondent is Lan Qing Tian / Qingtian Lan of Chengdu, Sichuan, China, self-represented.

2. The Domain Names and Registrars

The disputed domain names <louisxiiicognac.top>, <louisxiiicognac.vip>, <louisxiii.vip>, <louisxiii1874.top>, <remy-martin.top>, <remy-martin.vip>, <remymartin1724.top> and <remymartin1724.vip> are registered with Chengdu West Dimension Digital Technology Co., Ltd.

The disputed domain names <louisxiii1874.vip> and <remymartin1724.com> are registered with West263 International Limited.

Both Chengdu West Dimension Digital Technology Co., Ltd. and West263 International Limited are hereinafter referred as the “Registrars”.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 2, 2016. On August 2, 2016, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On August 3, 2016, the Registrars transmitted by email to the Center their verification responses confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on August 9, 2016.

On August 8, 2016, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On August 9, 2016, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.

The Center verified that the Complaint together with 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”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent in both Chinese and English of the Complaint, and the proceedings commenced on August 16, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 5, 2016. The Response was filed with the Center on September 4, 2016.

The Center appointed Douglas Clark as the sole panelist in this matter on September 12, 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 company incorporated in France producing and selling cognacs and liquors.

It is the proprietor of registrations in China for the trade marks REMY MARTIN, LOUIS XIII and LOUIS XIII DE REMY MARTIN, the earliest registration for REMY MARTIN dating from December 2, 1978 and for LOUIS XIII dating from July 28, 2014. These trademarks are also internationally registered.

The REMY MARTIN trade mark is the trade mark used to designate each cognac of the whole collection, namely: Remy Martin VSOP, Remy Martin XO, Remy Martin 1738 Accord Royal, Remy Martin Club, Remy Martin Centaure, Remy Martin Centaure de Diamant and Louis XIII de Remy Martin. The Remy Martin cognac was first sent to China in the late 1880’s.

The Respondent is an individual resident in China.

The disputed domain name <louisxiii.vip> was registered on May 17, 2016.

The disputed domain names <remy-martin.vip>, <remy-martin.top>, <remymartin1724.top>, <remymartin1724.vip>, <louisxiii1874.top>, <louisxiii1874.vip> and <remymartin1724.com> were registered on May 25, 2016.

The disputed domain names <louisxiiicognac.top> and <louisxiiicognac.vip> were registered on May 23, 2016.

At the time of filing of the Complaint, all of the disputed domain names were inactive. None of the disputed domain names currently resolves to a page except for <louisxiii.vip>, it contains a page that contains information in Chinese about King Louis XIII of France.

A cease-and-desist letter has been sent to the Respondent by the Complainant to let him justify the registrations to which the Respondent replied and attempted to justify the registration of these disputed domain names. After commencement of this proceeding, the Respondent offered to sell a number of the disputed domain names to the Complainant. The Respondent stated that the total costs related to these had been USD 600.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions are set out below.

Identical or Confusingly Similar

The Complainant submits that the disputed domain names are confusingly similar to its trade marks REMY MARTIN and LOUIS XIII. The disputed domain names <louisxiii.vip>, <remy-martin.vip> and <remy-martin.top> include the Complainant’s trade marks entirely.

The disputed domain names <remymartin 1724.com>, <remymartin1724.top>, <remymartin1724.vip>, <louisxiii874.top> and <louisxiii874.vip> refer to two dates in the Complainant’s history: 1724 was the founding year of the Complainant; and, 1874 was the date of origin of the LOUIS XIII cognac.

The addition of numerals increases the confusing similarity between the disputed domain names and the Complainant’s trade mark.

Further, the disputed domain names <louisxiiicognac.top> and <louisxiiicognac.vip> expressly refer specifically to the Complainant’s trade mark and its products sold.

No rights or legitimate interests

The Complainant further submits that the Respondent has no connection with the Complainant and has never sought or obtained any consent or trade mark registrations for REMY MARTIN and LOUIS XIII. It, therefore, has no rights or legitimate interests in the disputed domain name.

Registered and used in bad faith

The Complainant submits that its trade marks REMY MARTIN and LOUIS XIII are widely known brands and are recognized by Asian consumers and have been used in Asia and other parts of the world for many years that there is no likely legitimate right or plausible use possible by the Respondent.

Given the distinctiveness of the Complainant’s trade mark and reputation, the Complainant submits that there is no doubt that the Respondent had full knowledge of the Complainant’s trade marks when applying to register the disputed domain names.

The Complainant submits that the Respondent acquired the disputed domain names to disrupt the business of the Complainant and to prevent the Complainant from reflecting its mark in a corresponding domain name and/or disrupting the Complainant’s business.

B. Respondent

On August 13, 2016, the Respondent wrote in Chinese and English to the Complainant after the service of the Complaint to justify the registration of the disputed domain names. It later filed a Response specifically in relation to the disputed domain name <louisxiii.vip>. The Response also referred to other disputed domain names briefly.

In its email to the Complainant prior to the proceeding, the Respondent claimed that the purpose of the disputed domain names was to establish an online museum of exclusive network for public enterprises. The Respondent further stated that it wishes to become the Complainant’s strategic partner in e-commerce and the Respondent’s goal is to become the largest e-commerce networking platform in China, similar to Taobao.

In its email of August 13, 2016, the Respondent reiterated that if it could become the Complainant’s business partner in China, it would be willing to transfer the disputed domain names to the Complainant for free. Otherwise, the Respondent requested the Complainant to pay reasonable fees for obtaining the disputed domain names as the Respondent paid approximiately USD 600 for registering them. The Respondent emphasized that the disputed domain name <louisxiii.vip> resolves to a website about the French King Louis XIII.

In its Response, the Respondent stated specifically that the disputed domain name <louisxiii.vip> had been registered as a website to record the historical contributions of Louis XIII of France. The Respondent stated further that it paid for registering all the disputed domain names, therefore, the disputed domain names were legally registered.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the policy have been satisfied:

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

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) the disputed domain names have been registered and are being use in bad faith.

Language of the Proceeding

The language of the Registration Agreements is Chinese. 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 Complainant requested the language of the proceeding to be English on the grounds: (a) English is the most widely used language in international relations; (b) that the disputed domain names are registered in Roman characters (ASCII); (c) the Respondent appears to understand English “because he answered to the Cease and Desist Letter”; (d) the Complainant, based in France, has no knowledge of Chinese. In order to proceed in Chinese, the Complainant would have had to retain specialized translation services at a cost very likely to be higher than the overall cost of the proceeding.

The Center made a preliminary determination to:

1) accept the Complaint as filed in English;

2) accept a Response in either English or Chinese;

3) appoint a Panel familiar with both languages mentioned above, if available.

The final determination of the language of the proceeding lies with this Panel.

The Respondent did not respond specifically to the Complainant’s language request. It did however correspond with the Complainant in Chinese and English and it filed a Response in Chinese.

The Respondent has clearly indicated that it understands the nature of this proceeding and has responded in both English and Chinese. Further, the Panel considers the merits of the case to be strongly in favour of the Complainant. Translating the Complaint would cause unnecessary delay in this matter.

The Panel considers it fair to accept the Complaint in English and the Response in Chinese. It will render its decision in English.

Substantive Decision

A. Identical or Confusingly Similar

The disputed domain names <louisxiii.vip>, <remy-martin.vip> and <remy-martin.top>, other than the generic Top-Level Domains (“gTLDs”) are identical to the Complainant’s trade mark (except for the hypen in the case of <remy-martin> domain names). These disputed domain names incorporate the Complainant’s REMY MARTIN and LOUIS XIII marks in their entirety.

The disputed domain names <remymartin1724.top>, <remymartin1724.vip>, <remymartin1724.com>, <louisxiii1874.top>, <louisxiii1874.vip>, <louisxiiicognac.top> and <louisxiiicognac.vip> incorporate the Complainant’s marks in full with addition of numerals or the generic term “cognac”. The disputed domain names are therefore confusingly similar to the Complainant’s registered trade marks.

The first element of paragraph 4(a) of the Policy is therefore satisfied.

B. Rights or Legitimate Interests

Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) provides:

“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore 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 fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.”

The Complainant and its trade marks REMY MARTIN and LOUIS XIII are internationally well known for cognac. The Respondent has no business or any kind of relationships (licensor, distributor) with the Complainant.

The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names.

Paragraph 4(c) of the Policy sets out ways in which a respondent may establish its rights or legitimate interests. These are:

“(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are 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.”

The Respondent has attempted to justify the registration of these disputed domain names in its reply to the cease and desist letter. It claims that the purpose of the disputed domain names, specifically <louisxiii.vip>, was to establish an online museum of exclusive network for public enterprise. The letter further mentioned that the Respondent wishes to become the Complainant’s strategic partner in e-commerce and the Respondent’s goal is to become the largest e-commerce networking platform in China, similar to Taobao. At the time of the filing of the Complaint, the disputed domain names were inactive. Currently, the disputed domain name <louisxiii.vip> resolves to a website about the French King Louis XIII.

While, in other circumstances, a historical website devoted to a historical figure may give rise to some rights and legitimate interests, in this case where the Respondent has registered another nine disputed domain names which clearly are intended to refer to the Complainant, in the circumstances of this case, the Panel is not prepared to find that the Respondent has rights or legitimate interests in the disputed domain name <louisxiii.vip>. Moreover, the change in use (from inactive to active) only occurred after the Complaint was filed, so the Panel finds the Respondent’s current use of this disputed domain name to be pretextual.

The second element of paragraph 4(a) of the Policy is therefore satisfied in relation to all the disputed domain names.

C. Registered and Used in Bad Faith

The Panel finds that the disputed domain names <louisxiiicognac.top>, <louisxiiicognac.vip>, <louisxiii.vip>, <louisxiii1874.top>, <louisxiii1874.vip>, <remy-martin.top>, <remy-martin.vip>, <remymartin1724.com>, <remymartin1724.top> and <remymartin1724.vip> were registered in bad faith and are being used in bad faith.

The Respondent clearly knew of the Complainant when it registered the disputed domain names. The disputed domain names are comprised of not only the Complainant’s marks, but also of the word cognac or numbers that have historical significance to the Complainant’s business. These all serve as strong evidence of the Respondent’s knowledge and bad faith.

At the time of the filing of the Complaint, all of the disputed domain names were inactive, this does not prevent a finding of bad faith. Having examined all the circumstances of the case, the Panel finds that the Respondent registered and is using the disputed domain names in bad faith in order to disrupt the Complainant’s business and/or financially profit from the registration of the disputed domain names. (See paragraph 3.2 of the WIPO Overview 2.0). As noted under the second element, the Panel finds the current use of the disputed domain name <louisxiii.vip> to be pretextual.

The third part of the paragraph 4(a) of the Policy is therefore satisfied.

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 names <louisxiiicognac.top>, <louisxiiicognac.vip>, <louisxiii.vip>, <louisxiii1874.top>, <louisxiii1874.vip>, <remy-martin.top>, <remy-martin.vip>, <remymartin1724.com>, <remymartin1724.top> and <remymartin1724.vip> be transferred to the Complainant.

Douglas Clark
Sole Panelist
Date: September 30, 2016