The Complainant is E. Remy Martin & C° of Cognac, France, represented by Tmark Conseils, France.
The Respondent is XiaoLong Zhang of Guang'an, Sichuang, China. 2. The Domain Name and Registrar
The disputed domain name, (the "Domain Name"), is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 11, 2016. On February 11, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same day, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 12, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on the same day.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on February 18, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 9, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 10, 2016.
The Center appointed Tony Willoughby as the sole panelist in this matter on March 15, 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.
As indicated above, the Complainant was invited to amend its original Complaint. The invitation stemmed from the Registrar's response to the Center's registrar verification request, which disclosed that the Respondent had been making use of a privacy protection service in whose name the Domain Name was held. The original Complaint was directed to that privacy protection service. The amended Complaint is directed solely to the Respondent, the underlying registrant at the time of filing of the original Complaint. 4. Factual Background
The Complainant, a business based in France, is a well-known producer of Cognac. One of its brands is a luxury brand, which it sells under the brand name LOUIS XIII, a name which it has been using for many hundred years.
The Complainant is the registered proprietor of numerous trade mark registrations around the world of marks comprising or including the name LOUIS XIII, including by way of example:
(a) Australian Trade Mark Registration No. 520802 LOUIS XIII dated October 9, 1989 in class 33 for Cognac.
(b) Canadian Trade Mark Registration No. TMA747514 LOUIS XIII registered September 14, 2009 for Cognac.
(c) Chinese Trade Mark Registration No. 7624787 LOUIS XIII DE RÉMY MARTIN RARE CASK dated November 7, 2010 in class 33 for Cognac.
(d) French Trade Mark Registration No. 113825005 CLUB LOUIS XIII dated April 19, 2011 in inter alia class 33 for spirits.
The Complainant has produced evidence, unchallenged by the Respondent, to demonstrate to the satisfaction of the Panel that "Lùyì shísān" is a phonetic spelling and Roman character transliteration of 路易十三, which is the Chinese for "Louis XIII".
The Complainant is the proprietor of several domain names featuring those Chinese characters in Top-Level Domains ("TLDs") such as ".asia", ".hk", ".net" and ".tw" and is the owner of "luyishisan" domain names in the ".cn", ".hk" and ".tw" TLDs.
The Complainant is also the proprietor of trade mark registrations in Macau, China and the United States of America covering the Chinese for LOUIS XIII including by way of example Macau Registration No. N/074051 路易十三 (word) dated August 13, 2014 in class 33 for alcoholic drinks.
The Domain Name was registered on June 9, 2014, but was acquired by the Respondent on a date unknown, but post-December 4, 2015 (see below).
On November 17, 2015 the Complainant wrote to the registrant of the Domain Name at that date, a Mr. Yunhai Jiang, drawing the latter's attention to the Complainant's trade mark rights and seeking inter alia transfer of the Domain Name. There then followed a series of exchanges in which the registrant said that he could not speak English and invited the Complainant to correspond in Chinese. The only English used by Mr. Yunhai Jiang was in an email of November 19, 2015 reading "say chinese, no englsih [sic]". In the course of these exchanges the Complainant invited the registrant to translate the Complainant's correspondence using Google Translate or a similar translation tool and on two occasions sent to Mr. Yunhai Jiang screenshots depicting a Google Translate page featuring the Complainant's original letter in both English and Chinese.
Shortly thereafter the Domain Name was transferred to a Mr. Fenfen Huang.
On December 4, 2015 the Complainant wrote to Mr. Fenfen Huang, drawing the latter's attention to the Complainant's trade mark rights and its correspondence with the previous registrant and seeking inter alia transfer of the Domain Name. No reply was received.
Thereafter the Domain Name was transferred to the Respondent, who, prior to the Center's request for registrar verification, held the Domain Name in the name of a privacy protection service. 5. Parties' Contentions A. Complainant
The Complainant contends that the Domain Name is identical or confusingly similar to a trade mark in which it has rights; that the Respondent has no rights or legitimate interests in respect of the Domain Name; and that the Domain Name was registered and is being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 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 has been registered and is being used in bad faith. B. Identical or Confusingly Similar
The Domain Name (absent the ".com" generic TLD identifier, which may be ignored for this purpose) comprises the word "luyishisan" which is substantially identical phonetically to "路易十三", which in turn is a translation of "Louis XIII". The Panel is satisfied on the evidence before him that phonetically the Domain Name will identify the Complainant's Louis XIII brand of Cognac, which is widely sold in China and the Far East.
It is now well established that confusing similarity covers both phonetic similarities and similarities in meaning. As the panel stated in Happy Pancake AB v. Registration Private, Domains By Proxy, LLC / Fredrik Johansson,WIPO Case No. D2014-0870:
"The meaning of the words forming the Complainants trademark HAPPY PANCAKE, in use by the Complainant and registered well before the registration of the disputed domain name, and the meaning of the distinguishing word 'gladapannkakan' in the disputed domain name , are undoubtedly easily understood, notwithstanding linguistic specifics and differences in form, in both languages to interrelate so as to make the disputed domain name confusingly similar to the Complainant's trademark. In this regard, the Panel refers to Société pour l'Oeuvre et la Mémoire d'Antoine de Saint Exupéry – Succession Saint Exupéry – D'Agay v. Perlegos Properties,WIPO Case No. D2005-1085, where the panel confirmed that 'a semantic similarity between a trademark and a domain name can also exist if the trademark and the domain name contain word elements of different languages if a considerable part of the public understands the meaning of the translation. See e.g., Compagnie Generale Des Etablissements Michelin - Michelin & Cie. v. Graeme Foster, WIPO Case No. D2004-0279'."
The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights. C. Rights or Legitimate Interests
In this case the Domain Name is not in active use, the Respondent's name is not remotely similar to the Domain Name and the Respondent is at the end of a line of rapid fire transfers over a period of a few weeks (see section 4 above) following the issue of a cease and desist letter from the Complainant in November, 2015. On top of that the Domain Name, on the evidence before the Panel, evidence which includes a judgment emanating from a Chinese appellate court, is a name peculiarly referable to Louis XIII, the Complainant's trade mark.
The Complainant has produced a prima facie case calling for an answer from the Respondent, but there is no answer.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. D. Registered and Used in Bad Faith
The behavior of the Respondent and his two predecessor smacks strongly of a case of cyberflight. Why was no answer offered in response to the cease and desist letters, which were supplied by the Complainant in both English and Chinese to Mr. Yunhai Jiang, the first of the registrants in question? Mr. Yunhai Jiang sent emails to the Complainant in the Chinese language. At the very least he could have sent the Complainant an explanation in Chinese, fully aware that the Complainant was familiar with the Google Translate translation tool (see section 4 above), but he did not do so. Instead he transferred the Domain Name into another name, which may or may not be an alias.
Given the circumstances, and in particular the unique nature of the Domain Name and its association with the Complainant's brand, the Panel is left in little doubt that the Respondent and his predecessors were seeking to avoid the consequences of a UDRP decision against them and without any basis for countering the Complainant's contentions. The Panel finds that on the balance of probabilities the Respondent in collusion with the two previous registrants acquired the Domain Name for an abusive purpose targeting the Complainant's brand.
The fact that the Domain Name does not appear to have been used is of no assistance to the Respondent as a defence in this case. If the Respondent had a reasonable justification for selecting the Domain Name (e.g., for a genuine website devoted to the French monarch of that name) it would have been so easy for the Respondent to have come forward with it.
In the absence of any explanation, the Panel is left with the strong impression that the Domain Name was selected precisely because it will be understood in China to be the brand of the Complainant and on that basis the Panel is unable to see what lawful use could be made of it. The behavior of the Respondent and his predecessors gives no scope for confidence in how the Domain Name will be used in the future. In the hands of the Respondent, the Domain Name, which could be activated at any time, represents an abusive threat hanging over the head of the Complainant and thus an abusive use.
The Panel finds that the Domain Name was registered and is being used in bad faith. 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 Domain Name, , be transferred to the Complainant.
Tony Willoughby
Sole Panelist
Date: March 18, 2016
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