Complainant is E. Remy Martin & Co of Cognac, France, represented by Nameshield, France.
Respondent is Giammario Villa of Los Angeles, California, United States of America. 2. The Domain Names and Registrar
The disputed domain names and are registered with GoD, LLC (“GoDaddy”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 10, 2012. On April 10, 2012, the Center transmitted by email to GoDaddy a request for registrar verification in connection with the disputed domain names. On the same date, GoDaddy transmitted by email to the Center its verification response confirming that 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 13, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 3, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 4, 2012.
The Center appointed David H. Tatham as the sole panelist in this matter on May 18, 2012. 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 disputed domain names were both registered on December 10, 2011.
The earliest registration of Complainant’s trademark REMY MARTIN which was mentioned in the Complaint is an International Registration No. 203744 dated October 2, 1957. 5. Parties’ Contentions A. Complainant
Complainant is a part of the Rémy Cointreau Group whose main activities are the production of cognacs and liquors, 95% of which is sold outside France. Amongst its best known brands is Rémy Martin cognac. Rémy Martin is a family name, and a gentleman of that name established a cognac house in 1724. It subsequently passed from father to son for 5 generations.
The Complainant supplied details of numerous United States and international trademark registrations for REMY MARTIN itself as well as others containing this name. Also supplied were the names and registration dates for 14 domain names containing “remy-martin” or “remymartin” with different gTLDs or ccTLDs.
Complainant contends that the two disputed domain names are confusingly similar to its REMY MARTIN trademarks as the addition of the terms “vs” or “xo” are insufficient to escape a finding of confusing similarity. In any case the terms “vs” and “xo” actually mean the quality of Complainant’s Remy Martin cognac.
Complainant contends that Respondent has no rights or legitimate interests in respect of the disputed domain names, and it is not related in any way to Complainant. Complainant carries out no activity for, or has any business, with Respondent, and Respondent is neither licensed nor authorized to use, or to apply for registration of, the disputed domain names. The website at the disputed domain names redirect to an inactive page which, Complainant alleges, is a further indication of lack of rights or legitimate interests.
The disputed domain names incorporate Complainant’s well-known trade mark REMY MARTIN in its entirety as well as adding terms such as “vs” and “xo” which have a meaning as indicating the quality of cognac. Complainant contends that by registering the disputed domain names Respondent is trying to create a likelihood of confusion with its own well-known name and mark.
Complainant asserts that passive holding of a domain name has been found by other UDRP panels to be evidence of bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires that a complainant prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Complainant has produced ample evidence of their ownership of international registrations for the mark REMY MARTIN as well as two registrations in the USA, the country of residence for Respondent. All of these registrations are currently in force, and they were registered at various dates between 1957 and 2010. The fame and worldwide notoriety of Complainant is uncontested, and it is more than likely that these registrations are but a small part of Complainant’s portfolio of trade mark registrations for REMY MARTIN.
The addition of the letters “vs” and “xo” to the disputed domain names do nothing to alleviate the possibility of confusion, and in fact they compound it as these two terms have a meaning in relation to cognac, the production of which is Complainant’s principal activity.
The Panel has no hesitation in finding that the disputed domain names and are confusingly similar to Complainant’s trade mark REMY MARTIN, and that paragraph 4(a)(i) of the Policy is therefore proved. B. Rights or Legitimate Interests
It is well established that the onus is on a complainant to first prove that a respondent has no rights or legitimate interests in a domain name, but that once the said complainant has made out a prima facie case, the burden of production on this shifts to the respondent to rebut it. The burden of proof however remains with the complainant. See, for example, Document Technologies, Inc. v. International Electronic Communications Inc. WIPO Case No. D2000-0270.
In this instance, the Panel is satisfied that a prima facie case has been made out. In paragraph 4(c) of the Policy there are set out three circumstances which, if present, could demonstrate that a respondent does have rights or legitimate interests in a disputed domain name, and it is well established that this list is not exhaustive. However in this case Respondent has filed no response so it has not attempted to rebut the Complainant’s prima facie case.
Complainant annexed copies of Respondent’s two websites to the Complaint. These appear to be inactive because a request to view the sites resulted in each case in a message saying that it was “introuvable” or “untraceable”.
In the absence of any communication from Respondent, the Panel has accepted Complainant’s case and has concluded that Respondent has no rights or legitimate interests in the disputed domain names. Consequently, paragraph 4(a)(ii) of the Policy is proved. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which are evidence that the Respondent has acted in bad faith. In this case, the Panel believes that Respondent is in contravention of at least one of them.
The registration of the disputed domain names does appear to have been made “primarily for the purpose of disrupting” Complainant’s business, and to be an intentional attempt “to attract, for commercial gain, Internet users to” Respondent’s website. This falls squarely within paragraph 4(b)(iii) and (iv) of the Policy.
Additionally, Respondent was clearly aware of Complainants’ name and trade mark at the time of registration of the disputed domain names and this suggests opportunistic bad faith. See Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite,WIPO Case No. D2001-1070, where the word “pokémon” was held to be a well-known mark of which the use by someone without any connection or legal relationship with the complainant suggested opportunistic bad faith. See also BellSouth Intellectual Property Corporation v. Serena, Axel,WIPO Case No. D2006-0007, where it was held that the respondent acted in bad faith when registering the domain name at issue, because of the widespread and long-standing advertising and marketing of goods and services under the trade marks in question, the inclusion of the entire trade mark in the domain name, and the similarity of products implied by addition of telecommunications services suffix, and suggested knowledge of the complainant’s rights in the trade marks.
In view of the above, the Panel has concluded that, since Respondent must have known of Complainant’s rights in the name and trademark REMY MARTIN, and since Respondent has no rights or legitimate interests in the disputed domain names, then the disputed domain names were registered in bad faith.
Once again it is worth pointing out that Respondent has filed no response so it has not attempted to rebut Complainant’s arguments on this point.
The Panel concludes that paragraph 4(a)(iii) has been proved. 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, and , be transferred to Complainant.
David H. Tatham
Sole Panelist
Dated: May 30, 2012
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