WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
E. Remy Martin & C° v. Tayguara Helou
Case No. D2017-0791
1. The Parties
The Complainant is E. Remy Martin & C° of Cognac, France, represented by Nameshield, France.
The Respondent is Tayguara Helou of New York, New York, United States of America ("United States").
2. The Domain Name and Registrar
The disputed domain name <ramymartin.com> is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 20, 2017. On April 20, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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.
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, and the proceedings commenced on April 25, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 15, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 16, 2017.
The Center appointed Peter Burgstaller as the sole panelist in this matter on May 19, 2017. 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 widely known under the trademark REMY MARTIN as a specialized producer of premium quality cognacs. The Complainant's trademark REMY MARTIN, officially registered in France (first in 1877), is protected in several countries throughout the world (Annex 3 and 4 to the Complaint). The Complainant owns several domain names comprising the REMY MARTIN trademark (Annex 5 to the Complaint).
The Respondent did not respond to a cease-and-desist letter of the Complainant with regard to the registration of the disputed domain name (Annex 6 to the Complaint).
The website hosted by the disputed domain name is a registrar parking page with pay-per-click links (Annex 7 to the Complaint).
The Complainant has not granted or authorized the Respondent to make any use of the trademark REMY MARTIN; it also does not carry out any activity for the Respondent or has any business with the Respondent.
The disputed domain name was registered on March 14, 2017, by the Respondent (Annex 1 to the Complaint).
5. Parties' Contentions
The Complainant is specialized in the production of premium quality cognacs and is one of the most popular cognac brands in the world. The Complainant owns numerous trademark registrations and domain names with the expression "Remy Martin". The REMY MARTIN trademark was registered in France first in 1877 and is well known and recognized all over the world.
The disputed domain name is confusingly similar to the Complainant's trademark; it only substitutes the letter "e" with the letter "a" and the Respondent has not rights or legitimate interests in respect of the disputed domain name. No license or any other authorization has been granted by the Complainant to the Respondent in respect of the trademark REMY MARTIN.
The Respondent must be necessarily aware of the Complainant's rights with respect of the trademark REMY MARTIN because of the fame of that trademark; in fact the present case is a typosquatting case which indicates bad faith registration and usage of the disputed domain name. Moreover, the Respondent registered the disputed domain name and is using it for the operation of a click-through website. The Respondent is thereby deliberately trading on the goodwill of the Complainant, by attracting Internet users and diverting Internet traffic intended for the Complainant to the Respondent's website for the purpose of monetary gain.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(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 with respect to 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
A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by UDRP panels to be confusingly similar to the relevant mark for purposes of the first element (see, e.g., Sanofi v. Domains By Proxy, LLC / domain admin, WIPO Case No. D2013-0368, <sanifi.com>).
The applicable Top Level Domain ("TLD") in a domain name (e.g., ".com", ".club", ".nyc") is viewed as a standard registration requirement and as such is typically disregarded under the first element's confusing similarity test (see CANAL + FRANCE v. Franck Letourneau, WIPO Case No. DTV2010-0012).
In the present case the Panel finds that the disputed domain name <ramymartin.com> is confusingly similar to the Complainant's trademark REMY MARTIN; the Complainant therefore has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of "proving a negative", requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element (see WIPO Overview of WIPO Panels Views on Selected UDRP Questions, Third Edition ("WIPO Jurisprudential Overview 3.0"), paragraph 2.1).
In the present case the Respondent failed to submit a Response. Considering all of the evidence in the Complaint (especially with regard to the Annexes presented by the Complainant) and the Complainant's contentions that the Respondent has no rights or legitimate interests in the disputed domain name, that the Respondent has no connection or affiliation with the Complainant and the Respondent has not received any license or consent, express or implied, to use the Complainant's trademark REMY MARTIN in a domain name or in any other manner, the Panel concludes that the Complainant has made out an undisputed prima facie case so that the conditions set out in paragraph 4(a)(ii) of the Policy have been met by the Complainant.
C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, if the following circumstances, in particular but without limitation, are found by the Panel to be present, it shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from using the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on the Respondent's website or location.
As stated in many decisions rendered under the Policy (see Robert Ellenbogen v. Mike Pearson, WIPO Case No. D2000-0001), both conditions, i.e., registered and used in bad faith, are cumulative. Consequently, the Complainant must show that:
- the disputed domain name was registered by the Respondent in bad faith, and
- the disputed domain name is being used by the Respondent in bad faith.
Registration in bad faith
Prior UDRP panels have ruled that bad faith is established where a complainant's trademark has been shown to be well known or in wide use at the time of registering a domain name (see, e.g., The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113; Caesars World, Inc. v. Forum LLC., WIPO Case No. D2005-0517; and Pepsico, Inc. v. Domain Admin, WIPO Case No. D2006-0435).
Moreover, it is well-settled that the practice of typosquatting may in itself be evidence of a bad faith registration of a domain name (see, e.g., Longs Drug Stores California, Inc. v. Shep Dog, WIPO Case No. D2004-1069; Wal-Mart Stores, Inc. v. Longo, WIPO Case No. D2004-0816; see also WIPO Jurisprudential Overview 3.0, paragraph 1.9). The fact that the Respondent substituted the letter "e" with the letter "a" in the Complainant's mark (which is also used as the trade name of the Complainant) constitutes further evidence of this bad faith.
The fame and distinctiveness of the Complainant's trademark REMY MARTIN and the misspelling of this well-known trademark as a domain name by the Respondent shows to this Panel the Respondent's bad faith registration.
Use in bad faith
In order to meet paragraph 4(a)(iii) of the Policy the Complainant must also prove that the disputed domain name is being used in bad faith.
Given the fame, distinctiveness and reputation of the Complainant's trademark REMY MARTIN there is no apparent interpretation of the registration and use of the disputed domain name than that of bad faith. The conduct of the Respondent demonstrates awareness of the Complainant's mark and an intention to somehow benefit from its fame and/or to disrupt the business of the Complainant. Moreover, the fact that the Respondent's use of the disputed domain name to host a parked page comprising pay-per-click links does not represent a bona fide offering because such links compete with or capitalize on the reputation and goodwill of the Complainant's trademark and mislead Internet users. Together with the fact that the Respondent did not respond to the cease-and-desist letter by the Complainant, the Panel is led to the conclusion that the disputed domain name is also being used in bad faith by the Respondent.
Thus, the conditions set out in paragraph 4(a)(iii) of the Policy have been met by the Complainant.
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 <ramymartin.com> be transferred to the Complainant.
Date: June 3, 2017