WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

E. Remy Martin & Co. v. Yanglijun

Case No. D2013-2032

1. The Parties

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

The Respondent is Yanglijun of Tianjin, China.

2. The Domain Name and Registrar

The disputed domain name <remymartin.mobi> is registered with Beijing Innovative Linkage Technology Ltd. dba dns.com.cn (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 26, 2013. On November 26, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 28, 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.

On December 3, 2013, the Center transmitted by email to the parties in both English and Chinese regarding the language of proceedings. On December 10, the Center transmitted by email to the Complainant a reminder of submitting its comments on language of proceedings. On the same day, the Complainant submitted its request that English be the language of proceedings to the Center by email. The Respondent did not submit any comments regarding the language of proceedings by the specified due date.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 13, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 2, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 6, 2014.

The Center appointed Susanna H.S. Leong as the sole panelist in this matter on January 17, 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 in this administrative proceeding is E. Remy Martin & Co. and Remy Martin is a cognac brand produced by the Complainant. The Cognac House Remy Martin was established in 1724 by two wine-growers. Today, the Complainant E. Remy Martin & Co. is a trading house with an international reputation.

The Complainant owns numerous trademark registrations for REMY MARTIN in several countries, such as:

The Complainant owns and communicates on the Internet through various websites in the worldwide. The main one is “www.remymartin.com” (domain name <remymartin.com> registered on 25/09/1997), but the Complainant has also registered numerous domain names similar to the trademark REMY MARTIN such as:

<remy-martin.mobi> registered on 06/12/2012

<remy-martin.com> registered on 06/10/1998

<remymartin.net> registered on 11/12/2001

<remy-martin.net> registered on 28/08/2009

<remymartin.fr> registered on 28/07/1996

<remy-martin.fr> registered on 27/12/2001

<remymartin.in> registered on 21/09/2006

<remymartin.asia> registered on 10/12/2007

<remy-martin.asia> registered on 07/12/2007

<remymartin.cn> registered on 17/03/2003

<remy-martin.cn> registered on 17/03/2003

<remymartinvsop.com> registered on 23/02/2011

<remymartin.us> registered on 19/04/2002

<remymartinv.com> registered on 15/06/2010

<remymartin-xohonors.com> registered on 01/12/2005

The disputed domain name <remymartin.mobi> was created on September 28, 2006 by the Respondent. As the Complainant contends that the disputed domain name is identical to the trademark REMY MARTIN, a letter of cease and desist has been sent by email to the Respondent on October 31, 2013. However, the Respondent has not provided any response to this letter.

5. Parties’ Contentions

A. Complainant

The Complainant contends the disputed domain name is identical to its well-known and distinctive trademark REMY MARTIN registered and used since 1960 on the following grounds:

1. The disputed domain name incorporates the Complainant’s trademark in its entirety.

2. Furthermore, the addition of a gTLD “.mobi” is not sufficient to differentiate the disputed domain name from the Complainant’s trademark.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name on the following grounds:

1. According to Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455, 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, a respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.

2. According the WhoIs information, the Registrant Yanglijun (the Respondent) is not commonly known as REMY MARTIN. Previous UDRP panels have held that a respondent is not commonly known by a disputed domain name if the WhoIs information is not similar to the disputed domain name.

3. Moreover, the Complainant contends that the Respondent is not affiliated with nor authorized by the Complainant in any way, and he is not related in any way to the Complainant’s business.

4. The Complainant does not carry out any activity for, nor has any business with the Respondent.

5. Before the sending of the cease and desist letter, the disputed domain name displayed commercial links related to the Complainant’s business. Now, the disputed domain name is inactive. That fact shows that the Respondent has not any serious utility of the disputed domain name.

The Complainant contends that the disputed domain name was registered and is being used in bad faith on the following grounds:

1. The disputed domain name is identical to the Complainant’s trademark REMY MARTIN. The Complainant contends that its trademark REMY MARTIN is well known worldwide and especially in Asia where the Complainant promotes actively its products and has been recognized as a well-known trade mark by the Chinese Trademark Office in January 2010. Thus, the Respondent registered a domain name whose the term is widely-known and registered as a trademark.

2. Given the distinctiveness of the Complainant’s trademark it is reasonable to infer that the Respondent has registered the disputed domain name with full knowledge of the Complainant’s trademark and uses it for the purpose of misleading and diverting Internet traffic.

3. The Complainant argues that the Respondent registered the disputed domain name for the purpose of disrupting the business of the Complainant and in order to prevent the Complainant from reflecting its trademark in a corresponding domain name. By keeping the disputed domain name with a parking page, the Respondent prevents the Complainant to develop its business and blocks the registration.

B. Respondent

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

6. Discussion and Findings

6.1. Language of the Proceeding

According to the information received by the Center from the Registrar, the language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented in the case file, no agreement appears to have been entered into between the Complainant and the Respondent to the effect that the proceeding should be in English. Complying with the instructions from the Center, the Complainant has submitted a request that the proceeding should be in English, to which the Respondent has not objected.

After considering the circumstances of the present case and the submission of the Complainant’s request, the Panel is of the opinion that the language of the present proceeding shall be English and the decision will be rendered in English. The Panel based its decision on the following reasons:

(i) The Panel’s discretion under the Policy

Paragraph 11 of the Rules provides:

“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.”

Thus, the parties may agree on the language of the administrative proceeding. In the absence of an 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 ability to articulate the arguments for the case.

(ii) The circumstances of this proceeding

One important consideration is the issue of fairness to both parties in their abilities to prepare the necessary documents for this proceeding and also to respond adequately to these documents when they are served upon the parties.

In particular, the Panel notes that the material facts of this proceeding are generated in the English language. On record, the Respondent appears to be Chinese and is thus presumably not a native English speaker, but the Panel finds that persuasive evidence has been adduced by the Complainant to suggest in the interests of fairness, the language of the proceeding ought to be English. In particular, the Panel notes that (a) the disputed domain name is made up of letters in Ascii-Script and could be pronounced phonetically in English; and (b) the website to which the disputed domain name was pointed was in English which suggests that the Respondent understands English; (c) the Center has notified the Respondent of the proceeding in both Chinese and English. The Respondent had a choice to respond to the Complaint in either Chinese or English as the Panel who has been appointed by the Center is conversant in both languages. The Panel is of the view that if the Respondent had experienced difficulty with the English language, it could have communicated this to the Center and the Panel would have ruled accordingly. However, the Respondent has chosen not to respond to the Complainant’s allegations. Considering these circumstances, the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case.

In considering the circumstances of the present case, the Panel decides that the language of the proceeding shall be English and the decision will be rendered in English.

6.2. Substantive Elements of the Policy

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must establish that each of the three following elements is satisfied:

1. the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

2. the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

3. the disputed domain name has been registered and is being used in bad faith.

Paragraph 4(a) of the Policy clearly states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied in this proceeding.

Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.

On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Complainant has adduced evidence to demonstrate that it has registered trademark rights and continues to have such rights in the REMY MARTIN trademark for cognac in many countries in the world. Furthermore, the Panel finds that the Complainant has registered trademark rights in the REMY MARTIN trademark in China, the country in which the Respondent appears to reside. The Panel finds that the Complainant’s REMY MARTIN mark is a widely-known mark for cognac offered by the Complainant.

In assessing the degree of similarity between the Complainant’s trademark and the disputed domain name, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between the Complainant’s trademark and the disputed domain name is to be considered from the perspective of the average consumer of the goods or services concerned in this case, and the average consumer is the Internet user seeking to purchase or download information about the Complainant’s products.

The disputed domain name consists of the Complainant’s trademark REMY MARTIN in its entirety and the generic Top-Level Domain (gTLD) suffix “.mobi”. The Panel is of the view that the most prominent and distinctive part of the disputed domain name is the term “remy martin” which for all intents and purposes is identical to the Complainant’s registered trademark REMY MARTIN. Given the fame and notoriety of the Complainant’s REMY MARTIN trademark, the addition of suffixes such as “.mobi”; “.com” or “.net” being the gTLD is not a distinguishing factor.

Bearing in mind the following factors, in particular (a) the widespread reputation and high degree of recognition of the Complainant’s REMY MARTIN trademark as a result of its fame and notoriety and (b) the distinctive character of the Complainant’s REMY MARTIN trademark, the Panel therefore finds that the disputed domain name is identical or confusingly similar to the REMY MARTIN trademark in which the Complainant has rights.

The Panel finds for the Complainant on the first part of the test.

B. Rights or Legitimate Interests

Based on the following reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name:

(1) there is no evidence of a legitimate use by the Respondent of the disputed domain name or reasons to justify the choice of the term “remy martin” in its business operations;

(2) there is no evidence to show that the Complainant has licensed or otherwise permitted the Respondent to use its trademark or to apply for or use any domain name incorporating the REMY MARTIN trademark;

(3) there is no indication whatsoever that the Respondent is commonly known by the disputed domain name and/or is using the disputed domain name in connection with a bona fide offering of goods or services;

(4) the Complainant and its REMY MARTIN trademark enjoy a widespread reputation and high degree of recognition as a result of its fame and notoriety in the cognac market and is a registered trademark in many countries all over the world, including China. Consequently, in the Panel’s view, in the absence of contrary evidence from the Respondent, the REMY MARTIN trademark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant.

The Panel notes the overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the complainant’s contentions. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1. Based on the above reasons, the Panel finds that the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption.

According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:

“(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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 Panel notes that the Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or evidence of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name. The Panel further notes that the Respondent has failed to submit a Response to the Complaint filed against it. In particular, the Respondent has failed to make submissions to demonstrate that it has rights or legitimate interests in the disputed domain name.

In accordance with the Rules, paragraph 14, the Panel thus draws such inferences as it considers appropriate, which are that the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent appears to be unable to adduce evidence of any rights to or legitimate interests in the disputed domain name.

The Panel finds for the Complainant on the second part of the test.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith, namely:

(i) circumstances indicating that the respondent has registered or 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 reflecting 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 on-line 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 of the respondent’s website or location.

The above circumstances are indicative of registration and use of a domain name in bad faith but they are by no means exhaustive. Evidence of other circumstances adduced before the panel can also constitute registration and use of a domain name in bad faith by a respondent in appropriate cases.

One important consideration in the Panel’s assessment of whether the Respondent has registered and is using the disputed domain name in bad faith is prior knowledge on the part of the Respondent of the Complainant’s rights in the trademark concerned. In this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks transcend national borders. Taking into account the worldwide reputation of the Complainant and its REMY MARTIN trademark, as well as the market presence of the Complainant in numerous countries including China, the Panel finds that it is highly unlikely that the Respondent would not have had actual notice of the Complainant’s trademark rights at the time of the registration of the disputed domain name. Furthermore, the Complainant’s brand of cognac is widely available on the Internet via its official website “www.remymartin.com” as well its many other websites and Internet addresses as stated above. A simple search on the Internet would reveal the presence of the Complainant’s trademark and domain names. Therefore, the Panel finds that it is not conceivable that the Respondent would not have had actual notice of the Complainant’s trademark rights at the time of the registration of the disputed domain name. Consequently, it would have been pertinent for the Respondent to provide an explanation of its choice in the disputed domain name, failing which the Panel draws the conclusion that the disputed domain name was registered in bad faith with intent to create an impression of association with the Complainant and its products.

Where the Respondent has chosen to register a disputed domain name that is identical or confusingly similar to the Complainant’s trademark and where the trademark in question has through substantial use acquired worldwide fame, reputation and notoriety, a reasonable conclusion is that the trademark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant. Thus, the burden on the Respondent to show that the choice of the disputed domain name was made legitimately and in good faith for the genuine offering of goods or services on the Internet is a very heavy one. There is no evidence that the Respondent has used or intends to use to the disputed domain name for purposes of bona fide offering of goods and services over the Internet. On the contrary, the Respondent’s “www.remymartin.mobi” website displayed commercial links related to the Complainant’s business when the Respondent is not affiliated with nor authorized by the Complainant in any way, and he is not related in any way to the Complainant’s business. Now, the disputed domain name is inactive. In this regard, the Panel finds that the Respondent has not provided any plausible explanation.

The Panel finds that the Complainant has adduced evidence and proved that by using a confusingly similar disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website under paragraph 4(b)(iv) of the Policy. The Panel finds that given the widespread fame of the Complainant’s REMY MARTIN trademark and a lack of plausible explanation for the choice of incorporating the Complainant’s famous trademark in the disputed domain name, the unauthorized commercial links to the Complainant’s business as displayed on the website onto which the disputed domain name resolved is certainly a relevant factor indicating bad faith registration and use.

Thus, the Panel finds for the Complainant on the third part of the test.

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 <remymartin.mobi> be transferred to the Complainant.

Susanna H.S. Leong
Sole Panelist
Date: January 31, 2014