The Complainant is E. Remy Martin & C° of Cognac, France, represented by Tmark Conseils, France.
The Respondents are Liu Hong Bao of Shenyang, Liaoning, China; nashan of Shenyang, Liaoning, China; Na Shan of Shenyang, Liaoning, China; Yuqing of Shenyang, Liaoning, China; Naziyu of Beijing, China; ZhangXin of Shenyang, Liaoning, China. 2. The Domain Names and Registrar
The disputed domain names , , , , , , , , and (the "Domain Names") are registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (the "Registrar"). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on September 26, 2016. On September 26, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On September 28, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrants and providing the contact details. On October 5, 2016, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant submitted a request that English be the language of the proceeding on October 6, 2016. The Respondents did not comment on the language of the proceeding by the specified due date.
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 and 4, the Center formally notified the Respondents of the Complaint in English and Chinese, and the proceeding commenced on October 11, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 31, 2016. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on November 1, 2016.
The Center appointed Karen Fong as the sole panelist in this matter on November 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 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 REMY MARTIN trade mark was registered by the Complainant for the first time in France in 1877 and in China in 1931.
The Complainant also sells some of its cognac product under the trade mark LOUIS XIII. The LOUIS XIII trade mark is registered all over the world. It was originally registered in France in 1882.
The REMY MARTIN trade mark is translated in Chinese as "人头马" or "人頭馬". This is well known to Chinese consumers for decades and in 2010, the Chinese Trademark Office of the State Administration for Industry & Commerce approved it as a "well-known trademark" in China.
The Complainant owns many domain names incorporating the REMY MARTIN, LOUIS XIII, 人头马 or 人頭馬 trade marks. These include , , , , , , , , , and .
The following Respondents registered the following Domain Names on these dates:
Respondent
Domain Name
Date of Registration
Liu Hong Bao
July 4, 2016
July 4, 2016
nashan
July 4, 2016
July 4, 2016
Na Shan
July 4, 2016
September 9, 2016
September 9, 2016
Yuqing
July 4, 2016
Naziyu
July 4, 2016
Zhang Xin
August 26, 2016
The following Domain Names are connected to pay-per-click websites with links to the Complainant's products and a variety of other products and services: , , , , , and . The Domain Name is connected to a website which offers the Domain Name for sale. The remaining two Domain Names, and are unused and redirect to inaccessible webpages. 5. Parties' Contentions A. Complainant
The Complainant contends that the Domain Names are identical or confusingly similar to the trade marks REMY MARTIN, LOUIS XIII, 人头马 and 人頭馬 (the "Trade Marks"), the Respondents have no rights or legitimate interests with respect to the Domain Names, and that the Domain Names were registered and used in bad faith. The Complainant requests transfer of the Domain Names, all of which it believes are related and under management and control of a single, unknown owner/registrant.
The basis of its belief that the registrants are related and under management and control of a single unknown owner/registrant are as follows:
1. All 10 Domain Names are registered with the same Registrar.
2. Some of the Domain Names are registered by common registrants or registrants who have same / similar names (nashan and Na Shan):
a) Liu Hong Bao - and ;
b) nashan - and ;
c) Na Shan - , and .
3. Some of the registrants have the same/similar email addresses:
a) domain_sales@ - and ;
b) edomain@ - and ;
c) domain_vip@ - ;
d) domain_names@ - ;
e) domain_manager@ - ;
f) 6360665@ - , and .
4. The following seven Domain Names have the same addresses, phone and fax numbers:
a)
b)
c)
d)
e)
f)
g)
5. The registrant of , ZhangXin was involved in E. Remy Martin & C° v. Zhangxin,WIPO Case No. D2016-0735 against the current Complainant. ZhangXin has the same email address as the one listed in respect of and the same address as the Respondents in 4 above. Further it was found in that case that ZhangXin was the assignee of Shan Na who was the assignor of the current Respondent, Nashan. There is quite obviously a link between nashan, Na Shan and Zhang Xin.
6. The registrant of , and , Na Shan, has the same email addresse for all three Domain Names but whilst the address of is the same as the other Domain Names listed in 4 above, the address for , is very similar to the address of ZhangXin which links the registrants of all 10 Domain Names.
7. The following seven Domain Names were registered on July 4, 2016 within 15 minutes of each other – from 12:45:37 to 13:00:10:
a)
b)
c)
d)
e)
f)
g)
8. Cease and desist letters were sent to the registrants of the Domain Names in 7 above on August 8, 2016 requesting for the Domain Names to be transferred by August 22, 2016. Three Domain Names were registered shortly after, by ZhangXin on August 26, 2016, and and by Na Shan on September 9, 2016.
9. All the Domain Names comprise the Trade Marks which are well known.
10. The following 7 Domain Names are connected to pay-per-click websites with the same content:
a)
b)
c)
d)
e)
f)
g)
The pay-per-click links connect to a variety of websites – from travel, furniture to some of the Complainant products. The Domain Name indicates that it is for sale. The two Domain Names, and are unused and redirect to inaccessible webpages.
11. The registrants, Na Shan (or nashan) for the following Domain Names: , , , and Zhang Xin for have had previous UDRP decisions against them under E. Remy Martin & C° v. Nashan,WIPO Case No. D2016 – 0734 and E. Remy Martin & C° v. Zhangxin,WIPO Case No. D2016-0735. Shortly after these UDRP decisions, the Domain Names mentioned here were registered.
12. A cease and desist letter was sent to Na Shan and nashan on August 8, 2016 in respect of , and . The response to this letter was sent by the email address of a third party, offering for sale the Domain Name indicating that Na Shan is connected to nashan.
B. Respondents
The Respondents 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 Names, the Complainant must prove each of the following, namely that:
(i) The Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondents have no rights or legitimate interests in respect of the Domain Names; and
(iii) The Domain Names were registered and are being used in bad faith. B. Preliminary Procedural Issue - Consolidation of Proceedings
Paragraph 4(f) of the Policy allows a panel to consolidate multiple disputes between parties at its sole discretion and paragraph 10(e) of the Rules empowers a panel to consolidate multiple domain name disputes in accordance with the Policy and Rules. However, neither the Policy nor the Rules expressly provide for the consolidation of multiple respondents in a single administrative proceeding. In fact, paragraph 3(c) of the Rules provides that a complaint may relate to more than one domain name provided that the domain names are registered by the same domain name holder. The panel in Speedo Holdings BV v Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO case No. 2010-0281 reviewed the relevant UDRP decisions in relation to consolidation in multiple respondents' cases and extracted the following general principles:
1. Consolidation of multiples registrants as respondents in a single administrative proceeding may in certain circumstances be appropriate under paragraphs 3(c) or 10(e) of the Rules provided the complainant can demonstrate that the disputed domain names or the websites to which they resolve are subject to common control, and the panel having regard to all of the relevant circumstances, determines that consolidation would be procedurally efficient and fair and equitable to all parties.
2. The administrative provider should act as a preliminary gatekeeper in such cases by determining whether or not such complaints fulfill the requisite criteria. Once a case is admitted on a prima facie basis, the respondent has the opportunity to make its submissions on the validity of the consolidation together with its substantive arguments. In the event that the panel makes a finding that the complaint has not satisfied the requisite criteria, the complainant is not precluded from filing the complaint against the individual named respondents.
In the present case, each of the Domain Names incorporates the Trade Marks in their entirety, and each of the Domain Names has been used either to divert consumers from the Complainant's website as well as to sell the Domain Names to the public. The Panel accepts the Complainant's contentions set out above under Section 4 (e.g., same registrar, similar date of registration, registrants' contact information). All of them point to the Complainant being the target of common conduct based on the registration and use of the Domain Names and that such conduct interferes with the Trade Marks. Furthermore, Complainant's claims against the Domain Names involve common questions of law and fact.
The Respondents had the opportunity but did not respond substantively to the Complaint.
Accordingly, applying the principles to the facts in this case which are described under Section 4 above, the Panel finds that the Complainant has established more likely than not that the Domain Names are subject to common ownership or control. The Panel finds such common control to justify consolidation of the Complainant's claims against the registrants of the Domain Names in this proceeding. The Panel further concludes in the circumstances of this case that consolidation would be fair and equitable to all Parties and procedurally efficient, and therefore will allow the consolidation as requested by the Complainant pursuant to paragraph 10(e) of the Rules. C. Language of the Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement (between the respondent and the registrar in relation to the disputed domain name), the language of the 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 proceedings. According to the information received from the Registrar, the language of the registration agreement for the Domain Names in this case is Chinese.
The Complainant submits that the language of the proceeding should be English on the following factors:
1. English is the most widely used language in international relation;
2. The Domain Names are registered with the top level domains – ".site", ".space", ".club", ".website", ".online" and ".link" all of which are in Roman alphabet and has no meaning in the Chinese language;
3. The Respondent was sent cease and desist letters in English which it responded to demonstrating that it understands the English language;
4. Two of the registrants, nashan and ZhangXin have been respondents in previous UDRP cases in which the Panel accepted English as the language of the proceeding.
The Panel accepts the Complainant's submissions regarding the language of the proceeding. The Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. The Panel notes that in any case all of the communications from the Center to the Parties were transmitted in both Chinese and English. There is therefore no question of the Respondent being able to understand the Complaint. The Respondent chose not to participate and not to respond to the Complaint. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding. D. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has registered rights to the Trade Marks.
The threshold test for confusingly similarity involves the comparison between the trade mark and the domain name itself to determine likelihood of confusion. The trade mark would generally be recognizable within the domain name. In this case the Domain Names comprise the Trade Marks in their entirety. 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 domain suffixes ".site", ".space", ".club", ".website", ".online" and ".link" The Panel finds that the Domain Names are identical or confusingly similar to a trade mark in which the Complainant has rights. E. Rights or Legitimate Interests
The Respondents are not known by the Domain Names and have no registered trade marks giving them any such rights. The Respondents are using seven of the Domain Names as pay-per-click websites. The use of a domain name to provide sponsored links does not establish rights or legitimate interests in such domain name if such use violates the trade mark rights of a third party. Paragraph 2.6 of the of the Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") states that
"Panels have generally recognized that use of a domain name to post parking and landing pages or PPC links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a "bona fide offering of goods or services" or from "legitimate noncommercial or fair use" of the domain name, especially where resulting in a connection to goods or services competitive with those of the rights holder. As an example of such permissible use, where domain names consisting of dictionary or common words or phrases support posted PPC links genuinely related to the generic meaning of the domain name at issue, this may be permissible and indeed consistent with recognized sources of rights or legitimate interests under the UDRP, provided there is no capitalization on trademark value (a result that PPC page operators can achieve by suppressing PPC advertising related to the trademark value of the word or phrase). By contrast, where such links are based on trademark value, UDRP panels have tended to consider such practices generally as unfair use resulting in misleading diversion".
Some of the Websites offer the Domain Names for sale as already stated above. The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondents. The Respondents have not responded and the Panel is unable to conceive of any basis upon which the Respondents could sensibly be said to have any rights or legitimate interests in respect of the Domain Names.
The Panel finds that the Respondents have no rights or legitimate interests in respect of the Domain Names. F. Registered and Used in Bad Faith
To succeed under the Policy, a Complainant must show that the Domain Names have been both registered and are being used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondents must have been aware of the Trade Marks which are well known when they registered the Domain Names. The Domain Names incorporate the Trade Marks in their entirety. In the Panel's view this is clear evidence that the registration of the Domain Names was in bad faith.
The Panel also concludes that the actual use of the Domain Names was in bad faith. Some of the Websites offer the Domain Names for sale. Further in response to the Complainant's cease and desist letter in relation to , one of the Respondents offered to sell the Domain Name for USD1,000.
These are circumstances indicating that the Respondents registered or acquired the Domain Names for the purpose of selling, renting, or otherwise transferring the Domain Names registration to the Complainant for valuable consideration in excess of your documented out-of-pocket costs directly related to the Domain Names. In any event the use of the Complainant's trade mark as the dominant part of the Domain Names is intended to capture Internet traffic from Internet users who are looking for the Complainant's products and services. Seven of the Domain Names are connected to websites with sponsored PPC links. This shows a clear intention on the part of the Respondents to attract for commercial gain by confusing and misleading Internet users into believing that the Websites are authorised or endorsed by the Complainant and then attempt to redirect such users to websites displaying unrelated content.
Two of the Domain Names are not connected to active websites and . This does not prevent a finding of bad faith. The Consensus View in paragraph 3.2 of WIPO 2.0 states that the apparent lack of active use of the domain name without any active attempt to sell or to contact the trade mark owner does not prevent a finding of bad faith. The Panel has to examine the circumstances of the case to determine whether the respondent is acting in bad faith. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa.
Finally, the Domain Name redirects to a registration website, where it is indicated that the Domain Name is for sale.
The Panel therefore finds that the above is clearly bad faith under paragraphs 4(b)(i) and 4 (b)(iv) of the Policy and the Panel concludes that the Respondents' registration and use of the Domain Names are 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 Names , , , , , , , , and be transferred to the Complainant.
Karen Fong
Sole Panelist
Date: December 5, 2016
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