The Complainant is E. Remy Martin & C° of Cognac, France, represented by Nameshield, France.
The Respondent is Liu Yu of Beijing, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 30, 2015. On July 30, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 31, 2015, 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. In response to a notification by the Center regarding the registrant information, the Complainant filed an amended Complaint on August 6, 2015.
On August 6, 2015, the Center sent an email to the parties in both Chinese and English regarding the language of the proceeding. On the same day, the Complainant submitted a request that English be the language of the proceeding while the Respondent indicated in Chinese on August 6, 2015 “please use Chinese to communicate. Thank you. Object to use English to communicate”.
The Center verified that the Complaint together with the amended 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 in both Chinese and English, and the proceeding commenced on August 13, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was September 2, 2015. Except for the above-mentioned email received from the Respondent on August 6, 2015, the Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 3, 2015.
The Center appointed Francine Tan as the sole panelist in this matter on September 11, 2015. 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 was founded in 1724 and is a branch of the Remy Cointreau Group engaged in producing and distributing alcoholic beverages worldwide. The Complainant specializes in the production of premium quality cognacs. Its REMY MARTIN trade mark was registered in France in 1877 and is a popular brand of cognac across the world. The recognition of the REMY MARTIN trade mark and associated Centaur logo design has spread widely.
The Complainant states it has long maintained a significant presence in China since the first batch of cognac was first sent to China in the late 1880’s.
The equivalent Chinese trade mark for REMY MARTIN is 人头马 (meaning “Man Head Horse”), transliterated as “ren tou ma”. The Complainant gave evidence showing that 人头马 is a recognized translation for REMY MARTIN.
The Complainant has registered its REMY MARTIN, REMY MARTIN & design, and 人头马 trade marks in China and in many countries around the world. The 人头马 mark is registered in China under Trade Mark Nos. 992742 (simplified Chinese characters) and 890641 (traditional Chinese characters). The registration dates are April 28, 1997 and October 28, 1996, respectively. On January 15, 2010, the Chinese Trademark Office of the State Administration for Industry and Commerce confirmed that 人头马 is a well-known trade mark for alcoholic beverages (not including beer) (International Class 33) in China.
The Complainant owns various domain name registrations including (registered on September 25, 1997), (registered on March 18, 2011), (registered on December 16, 2010), (registered on October 29, 2007), (registered on December 9, 2010) and (registered on August 28, 2007).
The disputed domain name was registered on June 10, 2015. The disputed domain name resolves to an inactive webpage. 5. Parties’ Contentions A. Complainant
The Complainant contends, firstly, that the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights, namely the 人头马 mark. The Complainant’s REMY MARTIN and 人头马 marks have been widely promoted for many years to the general consuming public in China and the rest of the world. These marks are therefore widely known and recognized. A search on these marks as well as on “Remy Martin Club” and “rentouma” display several results, all of them being related to the Complainant.
The disputed domain name contains the phonetic equivalent of the Complainant’s 人头马 trade mark in China and the transliteration of 人头马 into Latin script. The addition of the generic Top-Level Domain (“gTLD”) “.club” is not sufficient to escape a finding that the disputed domain name is confusingly similar to the trade mark. The choice of the “.club” gTLD is suggestive of the Complainant’s CLUB-branded product which is sold exclusively in Asia and in particular, in China.
The Complainant contends, secondly, that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not related in any way with the Complainant and the Complainant has no business relationship with the Respondent. The Respondent has not been licensed or authorized to use the Complainant’s trade marks or to apply for the registration of the disputed domain name. The Respondent is not commonly known by the name “rentouma”. Moreover, since the REMY MARTIN and 人头马 marks are so widely known, the Respondent likely could not have any right or legitimate interest in the disputed domain name. There is no bona fide offering of goods or services or a legitimate commercial or fair use.
Thirdly, the Complainant contends that the disputed domain name was registered and is being used in bad faith. The 人头马 mark is so well known and since the Respondent is domiciled in China, the Respondent must have been aware of the Complainant when it registered the disputed domain name. The incorporation of a famous trade mark within a domain name, coupled with an inactive website, may be evidence of bad faith registration and use. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Language of the Proceeding
The language of the Registration Agreement is Chinese whereas the Complainant was submitted in English. The Complainant requested that English be the language of the proceeding for the reason that English is the most widely used in international relations and one of the working languages of the Center. The Complainant is located in France and has no knowledge of Chinese. Requiring the Complainant to retain specialized translation services would mean it having to incur a cost very likely to be higher than the overall cost of the proceeding. The Respondent has been notified of the proceeding in Chinese and been afforded an opportunity to respond in Chinese.
Paragraph 11(a) of the Rules stipulates that:
“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.”
Paragraph 10(c) of the Rules requires panelists to “ensure that the administrative proceeding takes place with due expedition”.
In the exercise of its discretion pursuant to paragraph 11 of the Rules, the Panel determines that English shall be the language of the administrative proceeding. The Panel is of the view that it would be appropriate for English to be the language of the proceeding. If the Complainant were required to submit all the documents in Chinese by having them translated, undue delay in the proceeding would result.
The Panel noted that the Respondent requested for communications to be in Chinese. However, at no point did it indicate to the Center that it did not understand the contents of the Complaint nor did it specifically ask for the contents thereof to be translated. Other than the email communication it sent to the Center requesting that communications be in Chinese, it did not participate in the proceeding by filing a response to the assertions made by the Complainant and/or in response to what the Center had communicated to it regarding the significance of the proceeding. The nature of the proceeding and relevant deadlines were communicated to the Respondent in Chinese.
The Panel finds that adequate opportunity had been afforded the Respondent to respond and to defend its domain name registration. The Respondent chose not to respond notwithstanding communications that it received from the Center in the Chinese language. In the circumstances, with a view to ensuring due expedition in the progress of the proceeding, the Panel determines that English should be adopted in this case. B. Identical or Confusingly Similar
The Complainant has established it has rights in REMY MARTIN and 人头马.
On the issue of whether the disputed domain name is confusingly similar to the said marks, the Panel finds no similarity in the disputed domain name with the mark REMY MARTIN. With respect to the mark 人头马, the Panel is of the same view as the panel in the case of E. Remy Martin & Co v. xiangwu meng,WIPO Case No. D2012-0069):
“Although the trade mark 人头马 is visually different from the Disputed Domain Name, it cannot be denied that the Disputed Domain Name is phonetically identical to 人头马. As ‘ren tou ma’ is a highly foreseeable means of representing and rendering textual input of the trade mark 人头马 the Panel accepts that the Disputed Domain Name is visually confusingly similar to the trademark 人头马.”
The Panel finds it relevant to also cite the case of E. Remy Martin & Co v. ge xiguang,WIPO Case No. D2012-1769):
“The disputed domain name is the phonetic transliteration of the Complainant’s Chinese REMY MARTIN trademark. The Panel views the ‘rentouma’ portion of the disputed domain name as phonetically equivalent to the Complainant’s Chinese REMY MARTIN trademark. Furthermore, any person conversant in the Chinese language is likely to conclude that probably refers to the Complainant’s Chinese REMY MARTIN trademark. See Auchan v. Oushang Chaoshi,WIPO Case No. D2005-0407. It is therefore likely that consumers would be confused by the phonetically equivalent ‘rentouma’ in the disputed domain name.”
The Panel is accordingly of the view that the disputed domain name is confusingly similar to the 人头马 mark in which the Complainant has rights. The requirements of paragraph 4(a)(i) of the Policy have been satisfied. C. Rights or Legitimate Interests
The Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. There is nothing in the evidence which indicates that the Respondent is authorized by or affiliated with the Complainant, or that the Respondent has any rights or legitimate interests in the word “rentouma”. The evidence does not show the Respondent to be known by the name “rentouma”. 人头马 has been officially recognized as a well-known trade mark within the Chinese jurisidiction. In light of this, it behoves the Respondent to provide clear and persuasive evidence of its rights or legitimate interests in the disputed domain name. The Respondent has not responded and not rebutted the Complainant’s case.
In the absence of any Response from the Respondent, the Panel finds that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied. D. Registered and Used in Bad Faith
The Respondent does not appear to have used the disputed domain name in connection with an active website. The passive use of the disputed domain name, however, does not prevent a finding of there being registration and use in bad faith. (See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.)
The disputed domain name is phonetically identical to 人头马 which is a well-known trade mark of the Complainant. It is highly unlikely in the circumstances of this case involving the adoption of the “rentouma” word in combination with the “.club” gTLD (“Club” being one of the product brands of the Complainant), that the Respondent was unaware of the Complainant and its 人头马 trade mark and, possibly, of the Complainant’s “.com”, “.cn” and “.” domain name registrations containing the “rentouma” word when it registered the disputed domain name. The specific combination of the word “rentouma” and the “.club” gTLD gives to Internet users the false impression that the Respondent is officially linked to or endorsed by the Complainant. The Panel finds it difficult to envisage a legitimate way for the Respondent to use the disputed domain name in light of the reputation of the 人头马 mark.
The Respondent did not rebut the Complainant’s allegations at any point in the proceeding.
The Panel accordingly finds under the totality of the circumstances that the disputed domain name has been registered and used in bad faith. The requirements of paragraph 4(a)(iii) of the Policy have been satisfied. 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 be transferred to the Complainant.
Francine Tan
Sole Panelist
Date: September 24, 2015
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