WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

E. Remy Martin & C° v. Zouxinyue

Case No. D2013-2219

1. The Parties

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

The Respondent is Zouxinyue of Beijing, China.

2. The Domain Name and Registrar

The disputed domain name <remymartinlouisxiii.net> is registered with eName Technology Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 20, 2013. On December 23, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 24, 2013, 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”).

On December 30, 2013, the Center transmitted by email to the parties in both English and Chinese regarding the language of proceedings. On January 2, 2014, the Complainant submitted its request that English be the language of proceedings to the Center by email. The Respondent did not submit any comments on the language of proceedings within the specified due date.

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 7, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 27, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 28, 2014.

The Center appointed Jonathan Agmon as the sole panelist in this matter on February 5, 2014. 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, E. Remy Martin & C° is a France based company and is a branch of the Remy Cointreau Group. The Complainant engages in producing alcoholic beverages and luxury and premium quality cognacs. The Complainant’s products are sold worldwide and particularly in Asia, Oceania and Europe.

The Complainant is the owner of numerous trademark registrations for the REMY MARTIN and LOUIS XIII marks around the world. For example: United States of America (“US”) Trademark Registration No. 0749501 – REMY MARTIN of May 15, 1962; International Trademark Registration No. 508092 – REMY MARTIN of December 1, 1986; Chinese Trademark Registration No. 770484 – REMY MARTIN of August 2, 1993; U.S. Trademark Registration No. 0351192 - LOUIS XIII of June 10, 1937; Chinese Trademark Registration No. 1053176 – LOUIS XIII de Remy Martin of July 14, 1997 and many more.

Through extensive use around the world, REMY MARTIN and LOUIS XIII trademarks have generated vast good will and have become well known in connection with alcoholic beverages and luxury and premium quality cognacs.

The Complainant has also developed a presence on the Internet and is the owner of numerous domain names which contain the name “Remy Martin” and/or “LouisXIII”. For example: <remymartin.com>, <louis-xiii.net>, <remymartinlouisxiii.com> and more.

The disputed domain name <remymartinlouisxiii.net> was registered on April 10, 2013.

The disputed domain name is currently inactive.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain name is confusingly similar to its earlier registered and widely used trademarks REMY MARTIN and LOUIS XIII.

The Complainant further argues that the disputed domain name incorporates its REMY MARTIN and LOUIS XIII trademarks in their entirety.

The Complainant further argues that the combination of both Complainant’s well-known trademarks and the addition of the “.net” element does not prevent the confusingly similarity to its trademarks, and do not change the overall visual, phonetic and conceptual impression of the designation as being similar and connected to its trademarks.

The Complainant further argues that the Respondent has no rights or legitimate interests in the disputed domain name as it is not affiliated with the Complainant and is not authorized or licensed to use the trademarks, not is it known by the disputed domain name.

The Complainant further argues that the Respondent had no rights to justify the registration of the disputed domain name since at the time of registration the Respondent was not known as “Remy Martin” or “Remy Martin Louis xiii” or “Louis xiii”.

The Complainant further argues that by registering the disputed domain name the Respondent seeks to take advantage of the notoriety of the Complainant’s trademarks, products and related activities.

The Complainant further argues that the Respondent did not register a trademark or service mark in the disputed domain name. The Complainant further indicates that there is no access to the disputed domain name which is offered for sale since its registration day.

The Complainant further argues that the Respondent was clearly aware of the Complainant’s activities and well-known and luxury trademarks and the registration were to take advantage of the confusion and possible link or association between the disputed domain name and the Complainant's well known trademarks.

The Complainant further argues that by offering the disputed domain name for sale the Respondent is processing to extract maximum value from the Complainant for the disputed domain name.

For all of the above reasons, the Complainant requests the transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

A. Procedural Issue – Language of the Proceedings

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.”

To the best of the Complainant’s knowledge, the language of the Registration Agreement for the disputed domain name is Chinese.

The Complainant requested that the language of proceedings be English.

The Panel cites the following with approval:

“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004).

In deciding the language of the proceeding, the Panel takes the following into consideration:

a) The disputed domain name <remymartinlouisxiii.net> consists of English characters, rather than Chinese letters;

b) The disputed domain name <remymartinlouisxiii.net> does not carry any specific meaning in the Chinese language;

c) The Respondent failed to respond to the Complainant’s request that the language of the proceeding be in the English language.

Upon considering the above, the Panel concludes, according to the Rules, paragraph 11(a), that there is no prejudice or unfairness to the Respondent for these proceedings to be conducted in English and for its decision to be rendered in English. Accordingly, the Panel determines that the language of this administrative proceeding should be English.

B. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

A registered trademark provides a clear indication that the rights shown on the trademark certificate belong to its respective owner. The Complainant is the owner of numerous trademark registrations for the REMY MARTIN and LOUIS XIII marks around the world. For example: U.S. Trademark Registration No. 0749501 – REMY MARTIN of May 15, 1962; International Trademark Registration No. 508092 – REMY MARTIN of December 1, 1986; Chinese Trademark Registration No. 770484 – REMY MARTIN of August 2, 1993; U.S. Trademark Registration No. 0351192 - LOUIS XIII of June 10, 1937; Chinese Trademark Registration No. 1053176 – LOUIS XIII de Remy Martin of July 14, 1997 and many more.

The Complainant is also the owner of numerous domain names which contain the name “Remy Martin” and/or “LouisXIII”. For example: <remymartin.com>, <louis-xiii.net>, <remymartinlouisxiii.com> and more.

The disputed domain name integrates the Complainant’s REMY MARTIN and LOUISXIII trademarks in their entirety, as a dominant portion.

The disputed domain name differs from the registered REMY MARTIN and LOUISXIII trademarks by the additional generic Top-Level Domain (“gTLD”) “.net”.

The combination of both trademarks and the additional gTLD “.net” do not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant’s trademarks. On the contrary, the Complainant uses the combination of both trademarks for its products. Previous UDRP panels have ruled that the mere addition of a non-significant element does not sufficiently differentiate the disputed domain name from the registered trademark: “The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark” (Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505).

This finding is consistent with previous UDRP panel decisions which have found that the combination of two trademarks in a domain name can, under certain circumstances, cause a likelihood of confusion, as both elements of such domain name, and their combination, can be understood as a reference to the Complainant (see A. P. Møller v. Web Society, WIPO Case No. D2000-0135; Audi AG v. Hans Wolf, WIPO Case No. D2001-0148; Saab Automobile AB et al. v. Joakim Nordberg, WIPO Case No. D2000-1761, see also Société des Produits Nestle SA v. Stuart Cook, WIPO Case No. D2002-0118).

Consequently, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to the trademarks in which the Complainant has rights.

C. Rights or Legitimate Interests

Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name. Paragraph 2.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).

In the present case, the Complainant has demonstrated that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests.

The Panel finds that the Complainant has established a prima facie case in this regard, inter alia, due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the REMY MARTIN or LOUISXIII trademarks, or a variation thereof, and the evidence presented indicates that the Respondent is not engaged in a bona fide offering of goods or services, as discussed further below.

The Respondent has not submitted any Response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name that is sufficient to rebut the Complainant’s prima facie case.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

D. Registered and Used in Bad Faith

The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii) of the Policy.

The Complainant has submitted evidence, which shows that the Respondent registered the disputed domain name long after the Complainant registered its trademark. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant owns a registration for the REMY MARTIN trademark at least since the year 1962 and a registration for the LOUIS XIII trademark at least since the year 1937. It is suggestive of the Respondent’s bad faith in these particular circumstances that the trademarks, owned by the Complainant, were registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735). This conclusion is even more valid when taking into account the vast goodwill that the Complainant has gained in its well-known trademarks.

Paragraph 4(b)(iv) of the Policy provides that it will be evidence of bad faith registration and use by a respondent, if by using the disputed domain name, the respondent had intentionally attempted to attract, for commercial gain, Internet users to the websites or other online locations to which the disputed domain name resolved, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the websites or locations or of a product or service on the websites or locations to which the disputed domain name resolved to.

Indeed, “when a domain name is so obviously connected with a Complainant, its very use by a registrant with no connection to the Complainant suggests ‘opportunistic bad faith’” (Tata Sons Limited v. TATA Telecom Inc/Tata-telecom.com, Mr. Singh, WIPO Case No. D2009-0671).

The Complainant provided evidence to demonstrate its trademark’s goodwill. The Panel cites the following with approval: “The Respondent’s selection of the disputed domain name, which wholly incorporates the Trade Mark, cannot be a coincidence […]. Given the fame of the Trade Mark, there is no other conceivable interpretation of the Respondent’s registration and use of the disputed domain name other than that of bad faith” (Swarovski Aktiengesellschaft v. Zhang Yulin, WIPO Case No. D2009-0947). It is therefore unlikely that the Respondent had no knowledge of the Complainant upon registering the disputed domain name.

The Respondent use of the disputed domain name is limited to offering the disputed domain name for sale on “www.sedo.com” for monetary gain. Offers to sell to the public at large, domain names that are identical or confusingly similar to marks of others, may constitute bad faith within the meaning of paragraph 4(a)(iii) of the Policy. This is based on the nonexhaustive character of the express list of bad faith factors in paragraph 4(b) of the Policy, and the lack of a justification for awarding financial gain to persons for the mere act of registration of the marks of others: United Feature Syndicate, Inc. v. All Business Matters, Inc. (aka All Business Matters.com) and Dave Evans, WIPO Case No. D2000-1199. See also Alloy Rods Global, Inc. v. Nancy Williams, [ WIPO Case No. D2000-1392; and eBay Inc. v. G L Liadis Computing, Ltd. and John L. Liadis d/b/a G L Liadis Computing Ltd. , WIPO Case No. D2000-1463.

Long ago, it was held that “[t]he sole fact that the disputed domain names have been registered by a person that does not use them but publicly offers them for rent or sale is the most perfect evidence of a bad faith activity in prejudice of Internet community and of the owner of the trademarks used as domain names”: TV Globo Ltda. v. Radio Morena, WIPO Case No. D2000-0245. The Panel finds that the Respondent in this case registered the disputed domain name primarily for the purpose of selling it to anyone prepared to pay a price exceeding the direct costs related to the disputed domain name. The Panel finds this is an indication of bad faith registration and use.

The Respondent made no use of the disputed domain name other than to offer it for sale. The disputed domain name does not resolve to an active website. The Respondent's passive use of the disputed domain name also indicates in this case bad faith registration and use of the disputed domain name: “The concept of a domain name being used in bad faith is not limited to positive action: inaction is within the concept” See Cho Yong Pil v. Kee Dooseok, WIPO Case No. D2000-0754. See also: “The significance of the distinction is that the concept of a domain name ‘being used in bad faith’ is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith” (Telstra Corporation Limited v. Nuclear Marshmallow, WIPO Case No. D2000-0003). The Panel finds that listing a domain name for sale for a profit is also an indication of bad faith use and registration.

Furthermore, previous UDRP panels have determined that incorporating a widely-known trademark, such as the Complainant’s REMY MARTIN and LOUISXIII trademarks, as a domain name may be considered as a clear indication of bad faith (see Caixa D’Estalvis I Pensions de Barcelona (“La Caixa”) v. Eric Adam, WIPO Case No. D2006-0464; Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441).

Based on the evidence presented to the Panel, including the late registration of the disputed domain name, the similarity between the disputed domain name and the Complainant’s trademarks and the Respondent’s listing of the disputed domain name for sale for profit instead of making any kind of other use, the Panel draws the conclusion that the disputed domain name was registered and used in bad faith.

Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.

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 <remymartinlouisxiii.net> be transferred to the Complainant.

Jonathan Agmon
Sole Panelist
Date: February 18, 2014