WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
E. Remy Martin & C. v. Mark Pellicane, First World Trade Corp.
Case No. D2017-1811
1. The Parties
The Complainant is E. Remy Martin & C. of Cognac, France, represented by Tmark Conseils, France.
The Respondent is Mark Pellicane, First World Trade Corp. of Richmond Hill, Ontario, Canada.
2. The Domain Names and Registrar
The disputed domain names <louisxiiicannabis.com>, <louisxiiicannabis.net>, <louisxiiimarijuana.com>, and <louisxiiimarijuana.net> are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 19, 2017. On September 20, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 21, 2017, 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 September 29, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 19, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 20, 2017. On the same day, the Center received an informal email communication from the Respondent in reply.
The Center appointed Antony Gold as the sole panelist in this matter on October 31, 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 a member of the Remy Cointreau group of companies, who produce a range of spirits, liqueurs and cognac. Among its brands are a range of Louis XIII-branded cognac products together with variations, such as Louis XIII Rare Cask and Louis XIII Black Pearl.
The Complainant distributes and sells its Louis XIII cognacs internationally and has protected its trade mark through a series of registrations, the earliest of which was registered in France in 1882. More recent trade mark registrations include, by way of example only, the following;
- LOUIS XIII trade mark, registration number 1520341, registered in Taiwan, Republic of China on June 1, 2012, in Class 33;
- LOUIS XIII trade mark, registration number 12160294, registered in China on July 28, 2014, in class 33.
The Complainant has registered a number of domain names which point to websites promoting its Louis XIII products. These include <louis-xiii.com> as well as many other domain names which incorporate the term “louisxiii”.
The disputed domain names were registered by the Respondent on April 10, 2017. On June 8, 2017, the Complainant’s advisors sent a claim letter to the Respondent and to the privacy service which was at that point shown as the registrant in respect of two of the disputed domain names, setting out the rights asserted by the Complainant and seeking a transfer to it of the disputed domain names. On June 20, 2017, the Respondent provided a response in respect of all of the disputed domain names indicating that he intended to use them in the medical and pharmaceutical field and that there was no “cross contamination” between his proposed use and the Complainant’s rights. The Respondent added that “As a side note, the registration and the Cannabis strain honors a pet named ‘fat louis’ that died at the age of 13.”
As at September 19, 2017, all of the disputed domain names pointed to parking pages, each of which contained links relating to, primarily, marijuana-related subjects. Each parking page also contains a link to “Louis XIII” although the website destination to which the Internet user is taken if the link is clicked is not known.
5. Parties’ Contentions
The Complainant says that each of the disputed domain names is confusingly similar to its LOUIS XIII trade marks and that there is a visual, phonetic and conceptual association between the disputed domain names and its trade marks. As evidence of its trade mark rights, the Complainant has provided copies of a number of its LOUIS XIII trade mark registrations, details of two of these being set out above. The Complainant asserts that, for the purpose of comparing the disputed domain names with its trade mark, the generic Top-Level Domain (“gTLD”) is ignored. It cites a number of court decisions given in various jurisdictions around the world as well as decisions of panels in earlier proceedings under the Policy concerning domain names incorporating its LOUIS XIII trade mark, which, it says, substantiates its assertions as to the widespread fame of its mark. The Complainant says that the repute of its LOUIS XIII trade mark is such that the addition to it of the terms “cannabis” or “marijuana” does not serve to render any of the disputed domain names dissimilar to the mark.
In the support of its assertion that the Respondent has no rights or legitimate interests with respect to the disputed domain name, the Complainant says that, at the time of registration of the disputed domain names in April 2017, the Respondent was not known as “Louisxiii” nor did he have any trade marks for “louisxiii” which might have justified his registration of the disputed domain names. Furthermore, it says, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names.
Moreover, it says, as at the date of registration of the disputed domain names, the Respondent was not using, nor had it made demonstrable preparations to use, the disputed domain names in connection with a bona fide offer of goods and services. It asserts that the Respondent has not made any genuine use of the disputed domain names, having merely pointed them to parking pages, and, notwithstanding the claims in his email of June 20, 2017, there is no evidence that he has made any attempt to use the websites for their claimed purpose. The Complainant adds that the inclusion of the words “cannabis” and “marijuana” within the disputed domain names will cause confusion to Internet users by falsely suggesting that the Complainant is marketing or intends to market cognac or other alcoholic beverages which contain cannabis or marijuana.
Accordingly, the Complainant asserts that there is no evidence which might suggest that the Respondent has any rights or legitimate interests with respect to the disputed domain names. The Complainant refers to the decision of the panel in Croatia Airlines d.d. vs Modern Empire Internet Ltd, WIPO Case No. D2003-0455, in which it was held that a complainant is required to make out a prima facie case that a respondent lacks rights or legitimate interests in a domain name and that, if it does so, the burden of production shifts to the respondent to demonstrate that it has such rights or legitimate interests.
Lastly the Complainant says that the disputed domain names were registered and used in bad faith. It says that the brand Louis XIII is associated by consumers solely with the Complainant’s activities and products. It asserts that, at the time of registration of the disputed domain names, the Respondent was clearly aware of the Complainant’s activities. The aim of the registrations was solely to take unfair advantage of the fame of the Complainant’s Louis XIII brand and that they were accordingly made in bad faith.
The Complainant says that pointing the disputed domain names to parking pages which include links which reproduce the Complainant’s LOUIS XIII trade mark amounts to bad faith use. The Complainant refers to earlier decisions of UDRP panels which have found that the use of domain name to point to a website which hosts pay-per-click links does not represent a bona fide offering if the links compete with or capitalize on the reputation of the complainant’s mark or otherwise mislead Internet users. See, for example E. Remy Martin & C° v. Liu Hong Bao, nashan, Na Shan, Yuqing, Naziyu, ZhangXin, WIPO Case No. D2016-1948, in which the panel found that the use of a number of domain names similar to the disputed domain names, such as <louisxiii.space> to point to parking pages “shows a clear intention on the part of the Respondents to attract for commercial gain by confusing and misleading Internet users into believing that the Websites are authorised or endorsed by the Complainant and then attempt to redirect such users to websites displaying unrelated content.”
Moreover, the Complainant says, the association which many Internet users encountering the disputed domain names will make between the Complainant’s Louis XIII products and the sale or use of cannabis or marijuana is damaging to the reputation of the Complainant. For these reasons, the Complainant says that the Respondent has registered the disputed domain names in order to mislead Internet users and disrupt the business of the Complainant and that this comprises bad faith use under paragraphs 4(b)(iii) and 4(b)(iv) of the Policy.
The Respondent did not reply to the Complaint save for sending a short email to the Center asserting that the cease and desist letter he had received from the Complainant in relation to the disputed domain names was “invalid given the fact that remy martin [sic] does not have a trademark on my domains.”
6. Discussion and Findings
Dealing, first, with the Respondent’s failure to file a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.
Paragraph 4(a) of the Policy requires that the Complainant proves each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent no rights or legitimate interests with respect to the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has produced evidence of its ownership of trade mark registrations for LOUIS XIII in several jurisdictions including the two trade marks, full details of which are set out above. The Panel finds that it has trade mark rights in LOUIS XIII.
As the Complainant has indicated, for the purpose of assessing identicality or similarity between the disputed domain names and the Complainant’s trade mark, the gTLD may be ignored. The addition of either “cannabis” or “marijuana” to LOUIS XIII within each of the disputed domain names does not serve to render any of them dissimilar to the Complainant’s trade marks. As noted in previous panel decisions under the Policy, the mere addition of purely descriptive terms does not affect a finding of confusing similarity. As the panel found in Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662, relating to the domain name <wal-martsucks.com>, “Thus, the Panel concludes that a domain name is ‘identical or confusingly similar’ to a trademark for purposes of the Policy when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name. In other words, the issue under the first factor is not whether the domain name causes confusion as to source (a factor more appropriately considered in connection with the legitimacy of interest and bad faith factors), but instead whether the mark and domain name, when directly compared, have confusing similarity.”
The Panel accordingly finds that the domain names are confusingly similar to a trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Policy sets out at paragraph 4(c) examples of circumstances, without limitation, by which a respondent may demonstrate rights or legitimate interests in a disputed domain name.
How these provisions are usually applied in practice is explained in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1. “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 ʻproving a negativeʼ, 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.”
There is no evidence that the Respondent is known by any of the disputed domain names. Nor is there any evidence that the Respondent has acquired any trade mark rights in “louisxiii”. Moreover, the registration and use of the disputed domain names by the Respondent has not been authorized by the Complainant, nor is the Respondent making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Furthermore, there is no evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods and services. The assertion by the Respondent that he wished to use the disputed domain names for the purpose of undertaking an unspecified venture “in the medical and pharmaceutical field” is implausible, not least when the disputed domain names still point to parking pages and the reasons why it was necessary to register four very similar domain names has not been explained. The additional claim, that the disputed domain names were selected to honour a pet named “fat louis” that died at the age of thirteen, is also implausible, particularly when considered against the actual use to which the disputed domain names have been put.
Accordingly, none of the grounds set out at 4(c) of the Policy which might justify the Respondent’s use of the disputed domain names would appear to be applicable to the current facts. The Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names and the burden of production shifts to the Respondent to show that he does have such rights or legitimate interests. Save to assert that the Complainant “does not have a trademark on my domains”, the Respondent has failed to respond to the Complaint and provide credible evidence to support his position.
The Panel accordingly finds that the Respondent has no rights or legitimate interests with respect to the disputed domain names.
C. Registered and Used in Bad Faith
At the time of registration of the disputed domain names, the Complainant’s Louis XIII brand was long-established and its trade marks were extensively protected by trade mark registrations. The Respondent has not provided any form of explanation as to his reasons for choosing “louisxiii” as a brand for a putative range of cannabis-related products. When coupled with the supplementary claim concerning the pet named “fat louis”, the combination of two explanations for registration, each of which is inherently implausible increases, rather than reduces, the inference that the Respondent was aware of the fame of the Complainant when he registered each of the disputed domain names. The Panel accordingly accepts the Complainant’s assertion that the disputed domain names were registered in bad faith in order to take advantage of the confusion which would be caused to Internet users who were aware of the Complainant’s LOUIS XIII trade mark.
The fact that the disputed domain names simply point to parking pages does not comprise good faith use of the disputed domain names. As was found in E. Remy Martin & C° v. Liu Hong Bao, nashan, Na Shan, Yuqing, Naziyu, ZhangXin, supra, the Respondent is using the disputed domain names in order to capture website traffic intended for the Complainant. Moreover, associating the disputed domain names with a drug which is illegal in many countries is, as the Complainant says, detrimental to its brand. In Philip Morris USA Inc. v. Arren Babayani, WIPO Case No. D2017-0724 (<marlboromarijuanapacks.com>), the panel found that “The Complainant’s reputation is tarnished by the conjunction of the trademark MARLBORO with the (in many jurisdictions) illegal substance of Marijuana. The Respondent’s sole purpose for the website appears to gain the trust of the Internet user into believing the website belongs to the Complainant.” The link between tobacco and marijuana is perhaps more readily made than between alcohol and marijuana or cannabis but the underlying point is the same.
Paragraph 4(b) of the Policy sets out circumstances, which, without limitation, if found by the panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b)(iv) of the Policy provides that bad faith registration and use will be found if, by its use of the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website.
These circumstances essentially describe the Respondent’s conduct in incorporating the Complainant’s well-known trade marks within the disputed domain names, as bait to attract Internet users to the parking pages to which they point and thereby generate income for the Respondent.
The Panel accordingly finds that the disputed domain names were registered and are used in bad faith.
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 <louisxiiicannabis.com>, <louisxiiicannabis.net>, <louisxiiimarijuana.com>, and <louisxiiimarijuana.net> be transferred to the Complainant.
Date: November 13, 2017