The Complainant is E. Remy Martin & C° of Cognac, France, represented by Nameshield, France.
The Respondent is Domain Admin, Domain Whois Protection Service of Ho Chi Minh, Viet Nam / Mark Juan of Brisbane, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with P.A. Viet Nam Company Limited (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 17, 2016. On February 17, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name, following up with reminders on April 22, 23, 24 and 25, 2016. On February 26, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 1, 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 March 7, 2016.
On March 1, 2016, the Center notified the Parties in both English and Vietnamese that the language of the Registration Agreement for the disputed domain name was Vietnamese. On March 7, 2016, the Complainant requested for English to be the language of the proceeding, to which the Respondent has not replied.
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, in both English and Vietnamese, and the proceeding commenced on March 9, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 29, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 30, 2016.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on April 8, 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. 4. Factual Background
The Complainant is a producer of alcoholic beverages, based in France, that exports 95% of its product worldwide. The Complainant specialises in premium quality cognacs.
The Complainant was founded in 1724, and its trademark was first officially registered in France in 1877. It first exported to China in the 1880s and registered a trademark in China in 1931.
The Complainant has listed 13 of its various trademarks, of which the following are representative:
RÉMY MARTIN with design, international trademark, WIPO ROMARIN database, registered September 18, 2009, registration number 1021309, classes 29, 30, 35, 41, 43;
REMY MARTIN, word mark, National Institute of Industrial Property (France), registered April 14, 1950, registration number 1366153, classes 32, 33;
REMY MARTIN, word mark, Trade Marks Registry, Intellectual Property Department, Hong Kong, China , registered April 10, 1974, registration number 19750084, class 33;
REMY MARTIN, bottle label, National Office of Intellectual Property of Viet Nam, registered July 30, 1998, registration number 32554.
The Complainant uses Internet domain names, principally registered on September 25, 1997, but owns numerous others comprising “remymartin” with various generic or geographic extensions.
Nothing is known about the Respondent except for such details as were provided for the purpose of registering the disputed domain name, which was registered on December 11, 2015. 5. Parties’ Contentions A. Complainant
The Complainant has produced copies of registration documents as evidence of its ownership of REMY MARTIN trademarks including those listed in section 4 above.
The Complainant contends that the disputed domain name is identical or confusingly similar to the trademark or service mark REMY MARTIN in which it has rights. The Complainant’s trademark is well known in Asian countries including Viet Nam and especially in China. The generic Top-Level Domain (gTLD) “.com” should not be taken into account in the determination of confusing similarity. The incorporation of the geographic term “Asia” in the disputed domain name is not distinguishing and may increase confusion by implying an association of the disputed domain name with the Complainant’s office in that region.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not related in any way to the Complainant and they have no business relationship. The Respondent has not been granted any authorisation by the Complainant to use or register the disputed domain name.
The Complainant says the disputed domain name could not have been used without infringing the Complainant’s intellectual property rights in the REMY MARTIN trademark. Furthermore, the Complainant’s trademark has been known in China and many other countries for so many years that the Respondent could have no plausible legitimate right to use it.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith. The Complainant’s trademark is so well known that the Respondent must have been aware of it.
The Complainant says the disputed domain name incorporates a famous trademark and has been inactive since its registration, constituting passive retention. A cease and desist letter was sent to the Respondent and there has been no reply.
The Complainant says that the Respondent’s use of a privacy service for the disputed domain name is supplemental proof of the Respondent’s lack of legitimate interest in it.
The Complainant has cited a number of previous decisions under the UDRP that it considers should support its position.
The Complainant requests the transfer to itself of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6.1. Preliminary Issue: Language of Proceedings
Under paragraph 11(a) of the Rules, 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. In the present case, the language of the Registration Agreement is Vietnamese.
The Complainant submitted its Complaint in English and requested the language of the proceeding to be English. The Respondent has not submitted any comments in this regard despite having been given the opportunity. The Center notified the commencement of the administrative proceeding in both English and Vietnamese. In these circumstances, and taking into account the Respondent’s default, the Panel concludes that, in accordance with paragraph 11(a) of the Rules, it is appropriate in this case to determine that the language of the proceeding be English.
Therefore, the Panel has decided to accept Complainant’s filings in English and issue a decision in English.
6.2. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute resolution provider, in compliance with the Rules, that:
“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad fait.”
The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute. A. Identical or Confusingly Similar
The Complainant must prove that it has rights in a trademark, whether registered or otherwise. The Complainant has produced copies of registration documents of some 13 trademarks dating back to 1906 registered internationally and in countries including its home country of France, also China, and one of the Respondent’s locations, i.e., Viet Nam, where the trademark was registered in 1998. The Panel is satisfied that the Complainant has rights in the trademark REMY MARTIN as required under paragraph 4(a)(i) of the Policy.
The disputed domain name is . Neglecting the gTLD “.com”, the remainder is “remymartinasia”, which is easily read as the Complainant’s trademark REMY MARTIN followed by the geographic designation “Asia”. The disputed domain name incorporates the Complainant’s trademark in its entirety. The Panel further finds that the additional word “asia” does not detract from confusing similarity in this instance but exacerbates it by creating a potential for erroneous presumption that the disputed domain name should lead to the authentic Internet presence of the Complainant in Asia. The Panel finds under paragraph 4(a)(i) of the Policy that the disputed domain name is confusingly similar to the Complainant’s trademark. B. Rights or Legitimate Interests
The Complainant has asserted that the Respondent has not been licensed or authorised in any way to use the Complainant’s trademark.
The Complainant has stated a prima facie case to the effect that it has never had any relationship with the Respondent and has never authorised the Respondent to use the Complainant’s trademark or to register the disputed domain name.
Since it is possible for a respondent to be in possession of information unknown to the complainant, paragraph 4(c) of the Policy provides for the respondent to establish rights or legitimate interests in a disputed domain name by demonstrating:
“(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.”
The above circumstances are illustrative and rights or legitimate interests may be established by the Respondent in any other way satisfactory to the Panel.
The Respondent in this case has not responded to the Complaint. The Panel can find no plausible circumstances whereby the Respondent would be likely to show that it had used the disputed domain name in bona fide business, or was commonly known by the disputed domain name, or has made a legitimate noncommercial or fair use of it, or could demonstrate rights or legitimate interests in any other way. The Panel finds for the Complainant in the terms of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered in bad faith and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The provisions of paragraph 4(b) of the Policy are without limitation and bad faith may be found otherwise by the Panel.
In overview, the Respondent has incorporated prominently into the disputed domain name a famous trademark, REMY MARTIN, a name used since 1724 and trademarked since 1877. A screen capture made on January 21, 2016, provided by the Complainant, showed the disputed domain name to resolve to a parking website and not to be in active use for any discernable purpose. The non-use of the disputed domain name in this case may fit the criteria of its being passively held. Whilst previous decisions made under the Policy do not have precedential status, many panels have noted the principles discussed in the early case of Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, in which the panel said, among other things, “... the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith”.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), summarising the matter of passive holding at paragraph 3.2, reads in part: “The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant’s concealment of its identity. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa”.
It is not necessary in this case to identify a precise purpose of registration or use of the disputed domain name in the terms exemplified in paragraph 4(b) of the Policy. Having regard to all the evidence, it is noted that the Complainant’s trademark of long standing has been incorporated into the disputed domain name, the Respondent has no relationship with the Complainant and has offered no explanation, and it is not possible to conceive of any plausible legitimate justification for the Respondent’s appropriation of a famous trademark. The disputed domain name is passively held and its registrant has concealed its identity from public scrutiny through the use of a privacy service, the use of which is not necessarily illegitimate in and of itself but may be contributory to a finding of bad faith when, as here, other factors are clear.
The totality of the circumstances surrounding the Respondent’s actions, considered in combination, lead the Panel to find on the balance of probabilities that the disputed domain name was registered and has been used with bad faith intent within the meaning of 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 be transferred to the Complainant.
Dr. Clive N.A. Trotman
Sole Panelist
Date: April 18, 2016
Full & Egal Universal Law Academy