WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

E. Remy Martin & C° v. Zhang Xiao

Case No. D2017-2102

1. The Parties

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

The Respondent is Zhang Xiao of Chengdu, Sichuan, China.

2. The Domain Name and Registrar

The disputed domain name <remymartin.sale> is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on October 27, 2017. On October 27, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 28, 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. On November 6, 2017, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding. The Respondent did not reply 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 November 15, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 5, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 6, 2017.

The Center appointed Jonathan Agmon as the sole panelist in this matter on December 13, 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, E. REMY MARTIN & C°, is a French company and a part of the REMY COINTREAU Group engaged in producing and distributing alcoholic beverages Worldwide.

Founded in 1724 in France, the Complainant specializes in the production of premium quality cognacs. The REMY MARTIN trademark is used to designate each cognac of the whole collection: REMY MARTIN VSOP, REMY MARTIN XO, REMY MARTIN 1738 ACCORD ROYAL, REMY MARTIN CLUB, REMY MARTIN CENTAURE, REMY MARTIN CENTAURE DE DIAMANT, LOUIS XIII DE REMY MARTIN.

REMY MARTIN is a popular cognac brand. The reputation of the REMY MARTIN name associated to its CENTAUR logo design and is well-known in various jurisdictions worldwide.

The trademark REMY MARTIN was officially registered by the Complainant for the first time in France in 1877. Furthermore, the Complainant is the owner of the following trademarks:

(i) International registration No. 317940 REMY MARTIN, registered on November 17, 1906;

(ii) International registration No. 236184 REMY MARTIN, registered on October 10, 1960;

(iii) International registration No. 457204 REMY MARTIN, registered on December 16, 1980;

(iv) International registration No. 508092 REMY MARTIN, registered on December 1, 1986;

(v) International registration No. 1021309 REMY MARTIN, registered on September 18, 2009.

The Complainant is also the owner of the following domain names:

(i) <remymartin.biz>, registered on November 19, 2001;

(ii) <remymartin.boutique>, registered on April 22, 2014;

(iii) <remymartin.club>, registered on March 29, 2014;

(iv) <remymartin.company>, registered on March 10, 2014;

(v) <remymartin.enterprises>, registered on February 17, 2014;

(vi) <remymartin.house>, registered on April 1, 2014;

(vii) <remymartin.net>, registered on December 11, 2001;

(viii) <remymartin.news>, registered on March 28, 2016.

The disputed domain name <remymartin.sale> was registered on May 13, 2017.

The disputed domain name was parked offering pay-per-click links in relation with the Complainant and its activity. Currently, the disputed domain name is currently parked under SEDO and is being offered for sale.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain name is confusingly similar to the Complainant’s famous and registered mark REMY MARTIN because it contains the Complainant’s mark in its entirety.

The Complainant argues that the Respondent started using the disputed domain name long after the Complainant began using its mark and did so due to the international reputation it has acquired in the mark REMY MARTIN.

The Complainant further argues that the Respondent is not known under the disputed domain name and is not authorized by the Complainant to use the disputed domain name, which is associated with the Complainant. It is further alleged that the Respondent has never used and does not intend to use the mark REMY MARTIN in connection with a bona fide offering of goods or in any other legitimate commercial or noncommercial way. Therefore, the Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant further argues that the disputed domain name was registered and used in bad faith. It is alleged that the Respondent registered in the past domain names, which are connected to well-known trademarks, that the Respondent registered the disputed domain name long after the Complainant registered the mark REMY MARTIN, and that the Respondent used the disputed domain name to direct Internet users to a parking page with pay-per-click links in relation with the Complainant and its activity.

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

6.1. Language of the Proceeding

Paragraph 11 of the Rules provides that:

“(a) 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 language of the Registration Agreement for the disputed domain name is Chinese. The Complainant requested that the language of the proceeding be English.

The Respondent did not respond.

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).

The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of the proceeding:

(i) the disputed domain name consists of Latin letters, rather than Chinese characters;

(ii) the Respondent used the English language in the website under the disputed domain name;

(iii) the Complainant may be unduly disadvantaged by having to conduct the proceeding in the Chinese language;

(iv) the Respondent did not object to the Complainant’s request that English be the language of the proceeding.

Upon considering the above, the Panel determines that English be the language of the proceeding.

6.2. Substantive Issues

A. 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 in the mark shown on the trademark certificate belong to its respective owner. The Complainant is the owner of numerous trademark registrations for the REMY MARTIN mark and has registered the first REMY MARTEN mark in 1877.

The disputed domain name <remymartin.sale> integrates the Complainant’s REMY MARTIN trademark in its entirety. The disputed domain name and the Complainant’s trademark differ in the space between the words REMY and MARTIN in the complainant’s mark, and in the addition of the generic Top-Level Domain (“gTLD”) “.sale” to the disputed domain name. The lack of space between the words REMY and MARTIN does not suffice to differ between the REMY MARTIN mark and the disputed domain name.

The addition of the gTLD “.sale” is without significance in the present case. It has long been established that the use of TLD is technically required to operate a domain name and is irrelevant to the question of similarity between a trademark and a domain name (see F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451; and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

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

B. 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 of production shifts to the Respondent to show that it has rights or legitimate interests with respect to the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.

In the present case, the Complainant has demonstrated prima facie that the Respondent lacks rights or legitimate interests with respect to 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 Complainant’s 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 and holds no trademark registration for the REMY MARTIN mark.

The Respondent has not submitted a response to the Complaint, nor did it provide any explanation or evidence to show any rights or legitimate interests in the disputed domain name 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

C. 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 evidence 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. The Complainant owns a registration for the REMY MARTIN trademark since 1877, while the Respondent owns the disputed domain name since May 13, 2017.

The Complainant’s prior registration and longstanding use of the REMY MARTIN trademarks suggests that the Respondent registered the disputed domain name with knowledge of the Complainant and its REMY MARTIN trademark (see Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735).

Furthermore, the disputed domain name includes the Complainant’s trademark in its entirety. Previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (see Edmunds.com, Inc v. Triple E Holdings Limited, WIPO Case No. D2006-1095). Prior UDRP panels have also established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.

The Respondent parked the disputed domain name offering pay-per-click links in relation with the Complainant and its activity. The Respondent is also offering the disputed domain name for sale. The Respondent’s behavior is clear evidence that he registered and is using the disputed domain name with knowledge of the Complainant and the Complainant’s trademarks, and indicates that the Respondent’s primary intent with respect to the disputed domain name is to turn a profit therefrom. Such actions by the Respondent constitute clear indications of bad faith registration and use of the disputed domain name. See Herbalife International, Inc. v. Surinder S. Farmaha, WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the Complainant’s trademark registration amounts to bad faith”.

In addition, on October 5, 2017, the Complainant sent a cease-and-desist letter to the Respondent. The Respondent did not respond to the Complainant letter. Such behavior may also be evidence of bad faith registration and use of the disputed domain name. Given the notoriety of the Complainant’s REMY MARTIN mark and the Respondent’s behavior, the Panel can find no good faith use that the Respondent can make of the disputed domain name.

Based on the evidence presented to the Panel, including the registration of the disputed domain name long after the registration of the Complainant’s marks; the confusing similarity between the disputed domain name and the Complainant’s marks; the Respondent’s use of the disputed domain name; the Respondent’s failure to respond to the Complainant’s cease-and-desist letter; and the fact that there is no conceivable good faith use that the Respondent can make of the disputed domain name, the Panel draws the inference that the disputed domain name was registered and is being 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 <remymartin.sale> be transferred to the Complainant.

Jonathan Agmon
Sole Panelist
Date: December 27, 2017