WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

E. Remy Martin & C° v. Zhao Yu Xing

Case No. D2016-0484

1. The Parties

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

The Respondent is Zhao Yu Xing of Beijing, China.

2. The Domain Name and Registrar

The disputed domain name <louisxiii-cognac.online> (the “Disputed Domain Name”) is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 10, 2016. On March 10, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 11, 2016, 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 March 16, 2016, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On March 16, 2016, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding 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 and 4, the Center formally notified the Respondent of the Complaint in both Chinese and English, and the proceedings commenced on April 1, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 21, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 22, 2016.

The Center appointed Kar Liang Soh as the sole panelist in this matter on April 28, 2016. 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 part of the REMY COINTREAU Group and produces luxury and premium quality cognac. The Complainant uses the trademark LOUIS XIII primarily in relation to its luxury and premium quality cognac comprising a core collection and limited collections associated with related trademarks LOUIS XIII Rare Cask and LOUIS XIII Black Pearl. The LOUIS XIII cognac collections are sold worldwide through many retailers and outlets.

The trademark LOUIS XIII was first registered in France in 1882. The Complainant owns many trademark registrations incorporating LOUIS XIII (the “LOUIS XIII Family Marks”) in many jurisdictions, including:

International registration 629594 has been granted protection in China. Various LOUIS XIII Family Marks, including the trademark LOUIS XIII have been recognized as well-known in various jurisdictions, including China, Republic of Korea and Macao, China.

The Complainant is also the registrant of multiple domain names incorporating the trademark LOUIS XIII, including the following:

The Complainant has also been successful in past domain name disputes relating to domain names incorporating the trademark LOUIS XIII (e.g., E. REMY MARTIN & Co v. Zouxinyue, WIPO Case No. D2013-2219).

The Respondent appears to be an individual based in Beijing, China. Beyond the WhoIs information of the Disputed Domain Name and the registrar verification in this proceeding, little information about the Respondent is known. The physical address and facsimile details of the Respondent in the WhoIs information are invalid as attempts to deliver the Written Notice of the commencement of administrative proceeding to the Respondent via these avenues have failed.

The Disputed Domain Name was registered on January 15, 2016 and did not resolve to a website as of the date of the Complaint. A cease-and-desist letter for the transfer of the Disputed Domain Name to the Complainant was sent by email on behalf of the Complainant to the Respondent on February 8, 2016. The Respondent did not reply to the Complainant’s cease-and-desist letter.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

a) The Disputed Domain Name is confusingly similar to the trademark LOUIS XIII and/or the related marks in which the Complainant has rights. These trademarks predate the registration of the Disputed Domain Name. The Disputed Domain Name incorporates the trademark LOUIS XIII in its entirety. The addition of the “-cognac” suffix in the Disputed Domain Name is clearly used for a descriptive purpose and does not have any impact on the overall impression of the Disputed Domain Name;

b) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Respondent is not commonly known by a name that consists in whole or in part of the wording “Louis XIII”. The Respondent has no rights to justify the registration of the Disputed Domain Name. As the Disputed Domain Name does not resolve to a website, it indicates an intention to take advantage of the notoriety of the Complainant’s trademarks, demonstrating a lack of legitimate interests by the Respondent in the Disputed Domain Name; and

c) The Disputed Domain Name was registered and is being used in bad faith. The LOUIS XIII Family Marks are used worldwide as a mark of luxury related only to the Complainant’s activities and its products. The Respondent must be aware of the Complainant’s rights given the cease-and-desist letter sent to the Respondent, to which the Respondent did not respond. The Disputed Domain Name has not been used since its registration. The Complainant contends that the Respondent has maintained the Disputed Domain Name in order to mislead and disrupt the business of the Complainant, as well as take advantage of the confusion and possible link or association between the Disputed Domain Name and the Complainant’s business. The Complainant relies on several decisions in support of its contentions, including, inter alia, the cases of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Accor v. S1A, WIPO Case No. D2004-0053; and Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574to support a finding of bad faith registration and use.

B. Respondent

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

6. Discussion and Findings

6.1. Language

Pursuant to paragraph 11(a) of the Rules, 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.

The Registrar has affirmed that the language of the Registration Agreement for the Disputed Domain Name is Chinese. The Complainant filed the Complaint in English and has requested that English be adopted as the language of the proceeding. Having considered the circumstances, the Panel allows the Complainant’s request, having taken into account the following factors:

a) The Complainant is based in France where Chinese is not a common language;

b) The Disputed Domain Name is registered in Latin characters;

c) The Complaint has already been filed in English, to which the Respondent did not respond despite the Center’s indicating that it would accept a response in either language.

d) Requiring that the Complaint be translated into Chinese would place an unnecessary burden on the Complainant;

e) The Respondent, having been given a fair chance to object, has not filed any response or commented on the Complainant’s request that English be adopted as the language of the proceeding; and

f) Requiring a Chinese translation of the Complaint will lead to unnecessary delay in the proceeding.

6.2. Discussion

In order to succeed in this proceeding, the following limbs of paragraph 4(a) of the Policy must be established:

a) The Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights;

b) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

c) The Disputed Domain Name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

Based on the tendered evidence of trademark registrations which extends to China, the Panel is satisfied that the Complainant owns rights in the trademark LOUIS XIII as well as in the LOUIS XIII Family Marks. The trademark LOUIS XIII is incorporated and is readily recognizable within the Disputed Domain Name despite the foreseeable absence of a space between the words LOUIS and XIII. The space character is not a valid character in a domain name and cannot be incorporated therein.

The addition of the generic suffix word “-cognac” in the Disputed Domain Name is clearly descriptive of the products offered by the Complainant under the trademark LOUIS XIII. It is the consensus opinion of past UDRP panels as outlined in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) that the mere addition of generic or descriptive terms to a trademark does not avoid confusing similarly between the trademark and the resulting domain name in general. It is also a consensus opinion that the generic Top-Level-Domain, which in this case is “.online”, should generally be ignored in the comparison between a disputed domain name and a trademark. The Panel accepts the consensus opinions.

The Panel finds that the incorporated trademark LOUIS XIII constitutes the dominant component of the Disputed Domain Name and holds that the Disputed Domain Name is confusingly similar to the trademark LOUIS XIII. The first limb of paragraph 4(a) of the Policy is accordingly established.

B. Rights or Legitimate Interests

The consensus view among past UDRP panels is that the Complainant is only required to establish a prima facie case that the Respondent lacks rights to or legitimate interests in the Disputed Domain Name. Once such a prima facie case is made out, the burden shifts to the Respondent to show otherwise.

The Complainant has maintained that the Respondent was never authorized, licensed or otherwise allowed by the Complainants to use the trademark LOUIS XIII and has no rights to justify the registration of the Disputed Domain Name. There is no evidence that the Respondent is affiliated with the Complainant in any way or that the Respondent is authorized by the Complainant to register and/or use the Disputed Domain Name. There is also no evidence in the proceeding indicating that the Respondent used the Disputed Domain Name in connection with a bona fide offering of goods and services. As such, the Panel is of the view that the Complainant has established a prima facie case that the Respondent lack rights to or legitimate interests in the Disputed Domain Name.

The Respondent has not filed any response during the course of the proceeding to deny or refute the Complainant’s contentions. In the absence of any evidence or explanation to the contrary, the prima facie case has not been rebutted and the Panel holds that the second limb of paragraph 4(a) of the Policy is also established.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, if fulfilled, constitute evidence of bad faith registration and use of a domain name. Notwithstanding this, it has been established by previous UDRP panels that the circumstances in paragraph 4(b) of the Policy are not exhaustive, and bad faith registration and use of a domain name may be founded on other grounds. As rightly pointed out by the Complainant, past cases stemming from Telstra Corporation Limited v. Nuclear Marshmallows, supra have long established that passive holding of a domain name entirely incorporating a trademark having a strong reputation amount to bad faith registration and use within the meaning of the third limb of paragraph 4(a). The current consensus view in WIPO Overview 2.0 is that circumstances when taken cumulatively may indicate bad faith, in particular, circumstances including the complainant having a well-known trademark, no response to the complaint having been filed, and the respondent’s concealment of identity.

Taking the above into consideration, the Panel concludes that the circumstances point to passive holding of the Disputed Domain Name by the Respondent amounting to bad faith registration and use for the following reasons:

a) It is apparent from the evidence that the Disputed Domain Name does not resolve to a website. There is also no evidence of use or intended bona fide use of the Disputed Domain Name by the Respondent;

b) The trademark LOUIS XIII has been held to be well-known by judicial authorities and the Panel does not see any reason to disagree with their findings. Given the well-known nature of the trademark LOUIS XIII in relation to luxury cognac products in China, it is inconceivable that the Respondent could have devised and adopted the Disputed Domain Name without prior knowledge of the trademark LOUIS XIII;

c) The Respondent did not respond to the Complainant’s cease-and-desist letter; and

d) The Respondent has provided invalid contact and address information in breach of the registration agreement.

Taking into account all of the above reasons, the Panel cannot find on the balance of probabilities that there could have been any actual or contemplated good faith use of the Disputed Domain Name by the Respondent and concludes that the Respondent’s passive holding of the domain name satisfies the requirement of the third limb of paragraph 4(a).

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, <louisxiii-cognac.online>, be transferred to the Complainant.

Kar Liang Soh
Sole Panelist
Date: June 21, 2016