The Complainant is E. REMY MARTIN & C° of Cognac, France, represented by Nameshield, France.
The Respondent is Remy Martin of Palm Desert, California, United States of America. 2. The Domain Name and Registrar
The disputed domain name (‘the Domain Name’) is registered with D, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 19, 2013. On July 19, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 19, 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.
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 July 25, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 14, 2013. The Response was filed with the Center on August 14, 2013.
The Center appointed Karen Fong as the sole panelist in this matter on August 30, 2013. 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 a Cognac house based in France. The Complainant and its predecessors in title have used the name REMY MARTIN in relation to its cognac since the 18th century. The Complainant has established an international reputation and goodwill in the brand REMY MARTIN. The Complainant also owns trade mark registrations for REMY MARTIN in many different countries. These include registrations in France, the United States of America as well as an International registration designating numerous territories around the world. The earliest registration submitted in evidence was registered in 1963. The Complainant owns many domain names incorporating the REMY MARTIN trade mark. These include , , , , and . The earliest date of registration for these domain names was in 1997.
The Domain Name was registered on April 23, 2013. At the time of the complaint, the website connected to the Domain Name (“the Website”) consisted a photograph of a facial shot of a woman with the heading “The Remy Martin – Natural Born Foodie”. At the time of the writing of the decision, the same photograph is on the Website with the heading “The Remy Martin”. There are three links on the right side of the home page titled – “Blog”, “San Diego” and : “Home”. The links are inactive.
Prior to the issue of proceedings, on June 21, 2013, the Complainant’s representative sent a cease and desist letter to the Respondent. The Respondent replied to say that the Domain Name is to be used for a personal blogging website for restaurant reviews with links to her social media pages all of which also use the name, “Remy Martin”. 5. Parties’ Contentions A. Complainant
The Complainant contends as follows:
(1) The Domain Name is identical or confusingly similar to the Complainant’s REMY MARTIN trade mark. The Domain Name incorporates the trade mark. The addition of the definite article “THE” as a prefix to the trade mark in the Domain Name emphasizes the uniqueness of the product designated by the trade mark and increases the risk of confusion rather than avoid it.
(2) The Respondent has no rights or legitimate interests with respect to the Domain Name. She/he is not in any way related to the Complainant nor has the Complainant any business or any other activity with the Respondent. The Complainant has not granted the Respondent any licence or authorization to use or apply to register the Domain Name. In the pre-proceedings correspondence, the Respondent did not provide any information or confirmation that “Remy Martin” is in fact his/her name. The Website contained only a photograph notwithstanding the Respondent’s contentions before proceedings were issued that it is a personal blogging website for restaurant reviews which will be linked to all the Respondent’s other social media sites under the same name. The Complainant’s trade mark is so widely known that given its notoriety and distinctiveness, the act of the Respondent registering and using the Domain Name constitutes and infringement of the Complainant’s rights. Hence any use by the Respondent cannot constitute a bona fide offering of goods or services.
(3) The Respondent is not known as Remy Martin and has not used the Domain Name in good faith. Given the notoriety of the Complainant’s trade mark, the Respondent was aware of the Complainant at the moment of registration of the Domain Name and has attempted to disrupt the Complainant’s activities. B. Respondent
The Respondent contends as follows:
(1) The addition of the prefix “THE” before “REMYMARTIN” shows a distinction between the Domain Name and the Complainant’s trade mark REMY MARTIN and therefore avoids the likelihood of confusion.
(2) She has rights or legitimate interests in respect of the Domain Name as before receiving any notice of the dispute, she has made preparations to use the Domain Name in connection with a bona fide offering of services – that of a personal blog including restaurant reviews, by visiting hundreds of restaurants in several states and numerous cities including collecting photos of the dishes, all of which would be on the Website. She also is commonly known by the name “Remy Martin” which she has used for several years including on various social media sites including Facebook, Twitter, Foursquare and Instagram. In Twitter and Instagram, the Respondent’s user name is “TheRemyMartin”. The photograph on the Website is that of the Respondent. Finally, as a blogging website, the Respondent is sharing her passion for food and dining experience which has no association with a brand of alcohol, hence this is making a legitimate noncommercial and fair use of the Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark of the Complainant.
(3) She has not registered or used the Domain Name in bad faith. She registered the name by which she is known as evidenced by the various social media websites. There is no intention to confuse or mislead consumers. The Website has the tag line, “Natural Born Foodie” which clearly distinguishes it from the Complainant. The Respondent is not a competitor of the Complainant and has not registered the Domain Name to disrupt the Complainant’s business. The Domain Name was not registered by the Respondent in an intentional attempt to attract for commercial gain, Internet users to the Website by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation or endorsement of the Website. The Domain Name was not registered or acquired primarily for the purpose of selling the Domain Name to the Complainant or competitor for valuable consideration in excess of the Respondent’s out of pocket costs directly related to the Domain Name. Finally, the Domain Name was not registered in order to prevent the Complainant from reflecting the mark in a corresponding domain name where the Respondent engaged in a pattern of such conduct. 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and is being used in bad faith. B. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has rights to the REMY MARTIN trade mark.
The threshold test for confusingly similarity involves the comparison between the trade mark and the domain name itself to determine likelihood of Internet user confusion. The trade mark would generally be recognizable within the domain name. In this case the Domain Name is made up primarily of the trade mark REMY MARTIN. The addition of the article “the” as a prefix to REMY MARTIN does nothing to minimise the risk of confusion. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy it is permissible for the Panel to ignore the generic domain suffix “.com”. The Panel finds that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights. C. Rights or Legitimate Interests
In relation to the second element of the UDRP, whilst the overall burden of proof rests with the Complainant, it is recognized that this could result in the impossible task of proving a negative. Hence, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such a prima facie case is made, the burden of production shifts to the respondent. The standard of proof required under the UDRP is “on balance”. An asserting party needs to establish that it is more likely than not that the claimed fact is true.
The Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. In the Response, the Respondent contends otherwise, relying on all three sub sections under paragraph 4(c) of the Policy. The three subsections read as follows:
(i) before any notice to you 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 (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 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.
There is some inconsistency with the Respondent’s contentions. The Respondent’s future blog on the review of restaurants is either to be a commercial venture or a noncommercial venture without intent for commercial gain. It cannot be both. If the Respondent’s blog on the Website is to be a commercial one say through advertising or referral fees from restaurants, then given the notoriety of the Complainant’s trade mark, it would be difficult to see how it could be a bona fide offering of services under the term “The Remy Martin”. This would of course also vitiate the claim of legitimate interests under paragraph 4(c)(iii) since the right or interest is no longer noncommercial or fair use of the Domain Name. It is not clear from the Response whether the intended use is to be an offer of services or to be a noncommercial blog to share with others the Respondent’s passion for food. It therefore follows that the Respondent has failed to prove her rights or legitimate interests under Policy, paragraph 4(c)(i) and (iii).
With respect to Policy, paragraph 4(c)(ii), the Respondent submits that she is commonly known by the name “Remy Martin” or “The Remy Martin”. No evidence has been submitted to show that this is the Respondent’s legal name. It is not clear when she first became known by the name “Remy Martin” nor how she came to be known by the name. The evidence submitted shows that the Respondent has a Facebook account under the name “Remy Martin” which features the same photograph as that on the Website. She has 3119 friends on Facebook. There is also a Twitter account with the user name: “@TheRemyMartin”. She has 639 followers on Twitter. The display name of her Foursquare account is “Remy Martin”. She has 340 friends. Her Instagram name is “theremymartin” and she has 678 followers. No information has been given when all these various accounts were started and when the names “Remy Martin” or “The Remy Martin” were first used. In the email correspondence between the parties, the Respondent has signed off as “Remy Martin”.
The actual language of the Policy provides that if a respondent has been commonly known by a domain name, even if it has acquired no trademark or service mark rights, this shall demonstrate its rights or legitimate interests in the domain name for purposes of the Policy. The panel in the case of AST Sportswear, Inc v. Steven R. Hyken,WIPO Case No. D2001-1324 commented that even if respondent infringes the trade mark rights of the complainant, “the Policy would not provide a remedy if respondent could prove a legitimate interest under paragraph 4(c)(ii), rather, complainant would have to pursue claims (whether of trade mark infringement or cybersquatting) under the applicable national laws. Given that a showing of “legitimate interest” can defeat a charge of cybersquatting under the Policy, a panel must be careful to ensure that a respondent’s claim that he or she has been ‘commonly known by the domain name’ is legitimate.”
In that case, the panel was satisfied that the respondent was known by the stage name “Johnny Blaze” as he submitted “conclusive documentary evidence” that he used that name since 1977 on various television shows. In another case, in relation to the domain name , the respondent did not file a response but the administrator of the domain name notified the complainant that the registrant was named “Allegra” and operated a law firm. The panelist checked various public directories all of which showed that the respondent was in fact named Allegra and operated a law firm under his name and the panel found that the respondent is likely to be commonly known under the domain name (Merrell Pharmaceuticals Inc. and Aventis Phrama SA v. Russel Allegra,WIPO Case No. D2005-0464). With respect to the case regarding the domain name , the respondent provided evidence that his user name, nickname or account name on various internet gaming services consisted of or included the word “sting”. The panel took the view that the respondent’s use of the name “sting” for gaming did not establish that he was commonly known by the domain name as the word was indistinctive and likely to be used by numerous people in cyberspace. It was likely that the respondent in that case used it for anonymity (Gordon Summer, p/k/a Sting v. Michael Urvam, WIPO Case No. D2000-0596).
In the present case, the evidence presented by the Respondent reveals that the Respondent has been using the name “Remy Martin” or “The Remy Martin” on the Internet. Although no evidence has been submitted to show that Remy Martin is the Respondent’s legal name, the Panel notes that Remy Martin is a proper name and there are a number of people named Remy Martin on the LinkedIn website. Furthermore, the Respondent is not a celebrity, and it would therefore be difficult for the Respondent to have set up all the various social media accounts and have those numbers of friends and followers just so as to to defeat this Complaint. The Panel did a quick reverse image search and found a dating website which featured a woman called “TheRemyMartin” with more photographs of the same person as the woman featured on the photograph on the Website. It contained information about “TheRemyMartin” which appears consistent with the information provided in evidence. In light of these circumstances, and based on the evidence presented by the Respondent, the Panel determines that the Complainant has failed to prove that the Respondent does not have rights or legitimate interests in the Domain Name for purposes of the Policy.1 D. Registered and Used in Bad Faith
In light of the Panel’s conclusion in relation to the second element, there is no reason to consider the parties’ allegations concerning bad faith. However for completeness and even if the Panel had taken the view that the evidence submitted was not sufficient to satisfy paragraph 4(c)(ii), the Panel also finds that the third element has not been satisfied. To succeed under the Policy, a complainant must show that the domain name has been both registered and used in bad faith. It is a double requirement.
Doing this backwards, regarding use of the Domain Name, the Domain Name is currently inactive. In the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 3.2 makes it clear that the lack of active use of a domain name without any active attempt to sell or to contact the trade mark holder does not prevent a finding of bad faith. All the circumstances of the case have to be considered. Examples of the cumulative circumstances found to be indicative of bad faith include the complainant having a well known mark, no response to the complaint having been filed and the registrant’s concealment of its identity. The leading case here is the Telstra case. Other than the fact the Complainant has a well known mark, the facts of this case do not fall within the factors that are usually found in the Telstra line of cases. The Complainant has not provided any evidence that the Respondent in using the Domain Name has intentionally attempted to attract, for commercial gain, Internet users to the Website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of the Website or location or of a product of service on the Website. The Panel therefore finds that there has been no use in bad faith.
With respect to registration in bad faith, the Complainant has not provided any evidence to show that:
(1) The Respondent has registered to Domain Name for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or a competitor for valuable consideration;
(2) The Respondent had engaged in a pattern of conduct to prevent the owner of a trade mark from reflecting the mark in a corresponding domain name;
(3) The Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor.
As such, the Panel finds that the Complainant has failed to prove the third element under the Policy2. 7. Decision
For the foregoing reasons, the Complaint is denied.
Karen Fong
Sole Panelist
Date: September 22, 2013
1 The Panel accepts that it is difficult to resolve questions of credibility in proceedings such as these without oral evidence or cross examination of witnesses. Given the limited nature of proceedings under the Policy, in many instances it may be impossible to determine a respondent’s motives for the registered domain name at issue, whether or not the respondent was targeting the complainant’s mark when it registered the domain name.
The Policy was adopted to address a limited class of cases, involving outright cybersquatting. When there is doubt about whether that has occurred, issues between the parties are better suited for resolution in national courts, which may review a full record and determine credibility in accordance with applicable law.
2 The Panel has taken into account the actual use of the Website in determining whether the Complainant has established the three elements of the Policy. Should the use of the website change in the future as to demonstrate that the use of the …name “Remy Martin” or “The Remy Martin” by the Respondent on the Internet was merely pretextual and intended to unduly benefit from the Complainant’s trademark, the Panel could contemplate the possibility that the Complainant may seek to submit a re-filed complaint together with evidence on the Respondent’s new actions, on the basis of this new use.
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