WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

E. Remy Martin & C v. Christopher MacNaughton

Case No. D2018-2106

1. The Parties

The Complainant is E. Remy Martin & C of Cognac, France, represented by Tmark Conseils, France.

The Respondent is Christopher MacNaughton of Gilroy, California, United States of America (“United States”).

2. The Domain Names and Registrar

The disputed domain names <louisxiiiclub.com> and <louis13cognac.com> 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 14, 2018. On September 14, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 17, 2018, 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 18, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 8, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 9, 2018.

The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on October 17, 2018. 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 the producer of the cognac Louis XIII, registered in the United States in 1878 and in France in 1882.

It is the owner of hundreds of trademark registrations throughout the world relating to LOUIS XIII and variations thereof, amongst which:

- French trademark registration No. 3825005 for CLUB LOUIS XIII, filed on April 19, 2011, in classes 32, 33 and 43;

- French trademark registration No. 3980114 for LOUIS XIII, filed on February 5, 2013 in classes 41 and 43;

- United States trademark registration No. 0351192 for LOUIS XIII, filed on June 10, 1937 and registered on October 19, 1937, in class 33.

The disputed domain names, registered on June 2, 2018, are <louisxiiiclub.com>, which currently redirects Internet users to “www.tequilalife.com” and <louis13cognac.com> which resolves to a parked page, displaying a link for the purchase of the disputed domain name, as well as sponsored links relating to web stores selling cognac and alcoholic beverages.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that its LOUIS XIII trademark is one of the most popular and prestigious alcoholic beverage brands in the world and a symbol of the French lifestyle, having become a well-known luxury brand.

Its trademark has been duly registered in several countries around the world and it holds numerous domain names, amongst which <louis13.com> (registered on April 17, 2001), <louisxiiicognac.com> (registered on March 16, 2012) and <clublouisxiii.com> (registered on April 7, 2011).

The Complainant’s trademark has already been recognized as a well-known trademark in several past UDRP decisions, as well as by the French INPI, the Tribunal de Grande Instance de Bordeaux, the Beijing High People’s Court, the Beijing Intellectual Property Court, China’s Trademark Review and Adjudication Board, Macao’s Courts of First and Second Instances, the Taiwanese IP Office and the Philippines Trademarks Office (Annexes 12.1 to 12.5 to the Complaint).

The disputed domain names, under the Complainant’s view, reproduce its LOUIS XIII trademark, being the <louisxiiiclub.com> a juxtaposition of its CLUB LOUIS XIII trademark, and the <louis13cognac.com> a mere addition of the generic term “cognac” to a typosquatting of its well-known trademark, where the Roman characters have been replaced by the numeral 13 in Arabic characters, not changing the overall visual, phonetic and conceptual impression thereof as being similar and connected to the Complainant’s earlier well-known, luxury and prestigious marks.

Regarding the absence of the Respondent’s rights or legitimate interests, the Complainant argues that:

(i) the Respondent was not known at the time of the registration of the disputed domain names as “Louis XIII”, as well as had no trademarks relating to such name;

(ii) the pay-per-click links present at the <louis13cognac.com> domain name cannot be considered a bona fide offering of goods or services since such links compete with or capitalize on the Complainant’s reputation and goodwill or otherwise mislead Internet users;

(iii) the Respondent solely registered the disputed domain names with the intention of offering them for sale for exorbitant prices, such as the <louis13cognac.com> domain name is being offered for sale for USD 2,500, what indicates that the Respondent seeks to take undue advantage of the Complainant’s well-known trademark;

(iv) the redirection of the <louisxiiiclub.com> domain name to a website dedicated to tequila also cannot be considered a bona fide offering of goods or services given that tequila is a competitor of the Complainant’s cognac and might create consumer confusion, especially considering the notoriety and prestige of the Complainant’s trademark.

As to the registration and use of the disputed domain names the Complainant argues that:

(i) the Complainant’s trademark is well known throughout the world, characterizing a luxury and prestigious trademark related only to the Complainant’s products and services;

(ii) by choosing the disputed domain names the Respondent was clearly aware of the Complainant, since that the two disputed domain names clearly indicate the association of the Complainant’s trademark with the respective product, cognac, and the juxtaposition of the Complainant’s CLUB LOUIS XIII trademark in the second disputed domain name;

(iii) the webpage that resolves from the <louis13cognac.com> domain name is a parked page, displaying sponsored links relating to web stores selling cognac and alcoholic beverages;

(iv) the webpage that resolves from the <louis13cognac.com> domain name also displays a link for the purchase of the disputed domain name for USD 2,500, a clearly exorbitant amount;

(v) the <louisxiiiclub.com> domain name is being redirected to a webpage relating to tequila products and activities, in direct competition with the Complainant’s products;

(vi) given the distinctiveness, notoriety and premium quality of the Complainant’s marks and products, there simply cannot be any actual or contemplated good faith use of the disputed domain names as this would invariably result in misleading diversion and taking unfair advantage of the Complainant’s rights (as in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has established rights over the LOUIS XIII and LOUIS XIII CLUB trademarks.

The juxtaposition of the LOUIS XIII CLUB in the first disputed domain name and the addition of the term “cognac” to the substitution of the Roman XIII characters by the numeral 13 in Arabic characters, in the second disputed domain name, do not prevent a finding of confusing similarity with the Complainant’s LOUIS XIII trademark.

For the reasons above, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademarks.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that may indicate the Respondent’s rights or legitimate interests in the disputed domain names. These circumstances are:

(i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names 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 names, in spite of not having acquired trademark or service mark rights; or

(iii) the Respondent is 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 trademark or service mark at issue.

According to the evidence submitted by the Complainant, the Respondent has indeed not used the disputed domain names in connection with a bona fide offering of goods or services given that the first disputed domain name is being used to redirecting Internet users to a webpage on competing tequila products and the webpage that resolves to the second disputed domain name consists of a parked page, displaying a link for the purchase of the disputed domain name, as well as pay-per-click links relating to web stores selling cognac and alcoholic beverages.

Furthermore, the Complainant has indeed stated that the Respondent was not known at the time of the registration of the disputed domain names as “Louis XIII”, as well as had no trademarks relating to such name.

Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain names.

C. Registered and Used in Bad Faith

In this case, both the registration and use of the disputed domain names in bad faith can be found pursuant to the Policy in view of the clear association between the Complainant’s trademark and the disputed domain names which expressly mention the respective product, cognac, and characterize the mere juxtaposition of the Complainant’s CLUB LOUIS XIII trademark in the first disputed domain name.

Furthermore, and as already mentioned, the use made of the disputed domain names to either redirect Internet users to a webpage relating to tequila products and activities, in direct competition with the Complainant’s products or in connection with a parked page, displaying pay-per-click links relating to web stores selling cognac and alcoholic beverages, cannot be considered a bona fide offering of goods or services.

Also, the offer of the <louis13cognac.com> domain name for sale for USD 2,500 is a further indication of the Respondent’s bad faith.

Taking into account all of the above, given the distinctiveness and notoriety of the Complainant’s trademarks, there simply cannot be any actual or contemplated good faith use of the disputed domain names as this would invariably result in misleading diversion and taking unfair advantage of the Complainant’s rights (as in Telstra Corporation Limited v. Nuclear Marshmallows, supra).

For the reasons above, the Panel finds that the Respondent has registered and used the disputed domain names in bad faith.

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, <louisxiiiclub.com> and <louis13cognac.com> be transferred to the Complainant.

Wilson Pinheiro Jabur
Sole Panelist
Date: October 31, 2018