Complainant is E. Remy Martin & C° of Cognac, France.
Respondent is Registration Private, Domains by Proxy, LLC of Scottsdale, Arizona, United States of America ("United States") / Luis Cortes of Henderson, Nevada, United States. 2. The Domain Name and Registrar
The disputed 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 August 31, 2017. On August 31, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 1, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on September 18, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 19, 2017.
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 Respondent of the Complaint, and the proceedings commenced on September 20, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 10, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on October 11, 2017.
The Center appointed Roberto Bianchi as the sole panelist in this matter on October 27, 2017. 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
Complainant, a branch of the REMY COINTREAU Group, is the producer of a luxury and premium quality cognac protected by the LOUIS XIII trademarks. The LOUIS XIII trademark was first registered in France in 1882. The "Louis XIII" cognac collections are sold worldwide.
Complainant owns, inter alia, the following trademark registrations:
TRADEMARK
JURISDICTION
REG. NUMBER
REG. DATE
PRODUCTS/SERVICES
LOUIS XIII DE RÉMY MARTIN RARE CASK
United States
3816880
July 13, 2010
Wine spirit benefiting from the appellation of origin Cognac, in International Class 33
LOUIS XIII DE RÉMY MARTIN
United States
3960690
May 17, 2011
Alcoholic beverages except beers, in International Class 33
CLUB LOUIS XIII
France
113825005
April 19, 2011
Beers, etcetera, in International Class 32; Alcoholic beverages except beers, etcetera, in International Class 33; restaurant services, etcetera, in International Class 43.
LOUIS XIII
France
133980114
February 5, 2013
Education services, Entertainment services, etcetera, in International Class 41; Restaurant services, etcetera, in International Class 43
Complainant also owns trademark registrations incorporating the term "Louis XIII" in various other jurisdictions, such as Australia, China, Hong Kong, China, Republic of Korea, Taiwan, Province of China, Indonesia, Lao People's Democratic Republic, Canada, Cambodia, Macau, China, as well as international registrations.
Complainant owns and operates the domain names (registered on January 21, 2003) and (registered on December 17, 2012), and numerous other domain names similar to its LOUIS XIII trademarks.
The disputed domain name was registered on April 7, 2017. The disputed domain name refers to a website with pay-per-click links.
On June 8, 2017, Complainant sent to Respondent a cease and desist letter, requesting Respondent to explain the reasons for his registration of the disputed domain name, and to undertake the necessary steps in order to transfer the disputed domain name to Complainant. On the same day, Respondent replied to Complainant that he would like to run and promote an online store in the near future, adding that he was not "afflicted or affiliated with remy Martin" [sic]. On June 13, 2017, Respondent sent a second email to Complainant merely stating, "jewelry and apparel". 5. Parties' Contentions A. Complainant
Complainant contends the following:
The disputed domain name is confusingly similar to Complainant's LOUIS XIII trademarks and domain names. The disputed domain name incorporates the LOUIS XIII trademark in its entirety. The addition to the dominant, distinctive and well-known trademark LOUIS XIII of the generic Top-Level Domain ("gTLD") ".com" and of the descriptive English word "collection" does not avoid the confusing similarity between the disputed domain name and Complainant's trademark.
Respondent has no rights or legitimate interests in respect of the disputed domain name. The trademark LOUIS XIII is well known in the world, where Complainant, its commercial partners and authorized third parties promote its products and related activities, and communicate on the Internet through various websites ("www." and "www.louisxiii−").
At the time of the registration of the disputed domain name, Respondent was not known as "Louis XIII". Respondent has no trademark to justify the disputed domain name, whereas Complainant has long-standing rights in the trademarks that predate the registration of the disputed domain name. There appears to be no legitimate reason why Respondent would incorporate Complainant's well-known mark in the disputed domain name. In addition, Respondent has spontaneously stated in reply to Complainant's cease and desist letter that he was not "afflicted or affiliated" with the Complainant. This definitely means there is neither a connection nor an association between the Complainant's trademarks and activities and the disputed domain name. By registering this disputed domain name, Respondent seeks to take advantage of the notoriety of Complainant's mark, product and related activities, considered by the public as a luxury and exclusive product due to its high quality and thanks to the long standing investments and efforts of Complainant's worldwide marketing team and management.
Respondent has no trademark or service mark rights in the term "Louis XIII", and has not developed any communication around "Louis XIII" before the registration of the disputed domain name. As evidence of use or demonstrable preparations to use the disputed domain name, Respondent only claimed that he intends to develop an online store "in the near future" (See Annex 4 to the Complaint). He also stated that the disputed domain name would be used in relation to jewelry and apparel. However, there is no evidence that Respondent is willing to use the disputed domain name in that sense. Respondent has made neither a legitimate non-commercial nor a fair use of the disputed domain name without intent for commercial gain or to tarnish Complainant's products and activities.
Considering the circumstances of the case, the fact that the disputed domain name refers to a website with parked links may mean that the Respondent is trying to take advantage of the well-known earlier trademarks LOUIS XIII trademarks and domain names and may support a finding that Respondent has no rights or legitimate interests in respect of the disputed domain name.
The disputed domain name was registered and is being used in bad faith. Complainant's LOUIS XIII trademarks are well known worldwide. Consumers consider that LOUIS XIII is a luxury mark, related only to Complainant's activities and its products, in particular Complainant's LOUIS XIII collection products. Respondent is clearly aware of Complainant's activities and of its well known and luxury trademark. It is clear that the aim of the registration was to take advantage of the confusion and create a link or association between the disputed domain name and Complainant's earlier well-known trademark rights. Respondent`s reply to Complainant's cease and desist letter lacks any information regarding his intention and interest in using the disputed domain name. In addition, Respondent did not suggest or submit a leave for expiration or an immediate transfer free of charge or removal of the disputed domain name. Thus, it is obvious that this attitude is the reflection of Respondent's bad faith.
The disputed domain name has been used in connection with a "pay-per-click" or "parking" service. In the present case, the parking service is provided by the Registrar. Complainant noticed that the parking website contains a link that identically reproduces Complainant's trademark LOUIS XIII associated to links related to Complainant's cognac products and activities, e.g.: "LOUIS XIII Rechercher & Trouver — Chercher le Web Maintenant - Cognac Remy Martin — Spiritueux de Grande Qualité".
An Internet user will only have to click three times, starting from the parking website, to finally access the website "" selling alcohol beverages online. This last website as mentioned above "Cognac Remy Martin — Spiritueux de Grande Qualité" mentions the activities of Complainant, describes in particular the LOUIS XIII cognac products created in 1874 and sells Complainant's cognac product. (See Annex 18). The parking website referring to the disputed domain name plus the related parked links might create confusion in consumers' minds. These evidences highlight the bad faith of Respondent. This attitude constitutes an evidence of bad faith insofar as the registration has the consequence to harm Complainant's trademarks reputation.
Given the distinctiveness, notoriety and premium quality of Complainant's mark and products and related activities, it is reasonable to infer that Respondent has registered the disputed domain name with full knowledge of Complainant's brand and for the purpose of misleading and disrupting the business of Complainant.
Considering the circumstances, the lack of favorable response of Respondent, following the sending of the letters of cease and desist (Annex 4), the non-use of the disputed domain name and the implied offer for sale of the disputed domain name may support a finding of bad faith. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Complainant has shown to the satisfaction of the Panel that it owns trademark rights in the LOUIS XII mark and other marks containing "Louis XIII". See section 4 above.
The Panel notes that the LOUIS XIII mark is the dominant element in the disputed domain name, where the addition of the descriptive term "collection" and the gTLD ".com" are inapt to distinguish one from the other. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.8 ("Is a domain name consisting of a trademark and a descriptive or geographical term confusingly similar to a complainant's trademark? […] Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements."))
The Panel concludes that the disputed domain name is confusingly similar to Complainant's LOUIS XIII marks. B. Rights or Legitimate Interests
In accordance with WIPO Overview 3.0, section 2.1: "How do panels assess whether a respondent lacks rights or legitimate interests in a domain name? […] While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of "proving a negative", requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element."
Complainant contends that its LOUIS XIII mark is well known worldwide. At the time of the registration of the disputed domain name, Respondent was not known as "Louis XIII". Respondent has no trademark to justify the disputed domain name, whereas Complainant has long-standing rights in the trademarks that predate the registration of the disputed domain name. There appears to be no legitimate reason why Respondent would incorporate Complainant's well-known mark in the disputed domain name.
Complainant also contends that Respondent has spontaneously stated in reply to Complainant's cease and desist letter that he was not "afflicted or affiliated" with the Complainant, which means that there is neither a connection nor an association between the Complainant's trademarks and activities and the disputed domain name. Respondent did not file or register trademark or service mark rights to "Louis XIII", and has not developed any communication around "Louis XIII" before the registration of the disputed domain name.
Complainant adds that Respondent only claimed that he intends to develop an online store but "in the near future" (See Annex 4 to the Complaint), and that the disputed domain name will be used in relation to jewelry and apparel. However, there is no evidence that Respondent is willing to use the disputed domain name as he claims, considering that the disputed domain resolves to a website with pay-per-click links. Respondent has made nor evidenced demonstrable preparations towards making a legitimate non-commercial or a fair use of the disputed domain name. Complainant concludes that the disputed domain name was registered for commercial gain, or to tarnish Complainant's products and activities. By registering this disputed domain name, Respondent seeks to take advantage of the notoriety of Complainant's mark, product and related activities, considered by the public as a luxury and exclusive product due to its high quality and thanks to the long standing investments and efforts of Complainant's worldwide marketing team and management.
The Panel notes that the available evidence supports Complainant's contentions. First, Respondent's name is either "Domains by Proxy, LLC" or "Luis Cortes" (per the WhoIs information provided by the Registrar), and there is no evidence that Respondent as an individual, business, or other organization has been commonly known by the disputed domain name, pursuant to Policy paragraph 4(c)(ii). Second, there is no evidence whatsoever on the casefile that the website at the disputed domain name was used in any manner, except occasionally, as shown by Complainant, as a "parked" domain name featuring sponsored links. In particular, Respondent failed to provide any evidence of preparations to use the disputed domain name in relation to his purported "online store in the near future" offering "jewelry and apparel" (as stated in his replies to Complainant's cease and desist letter.) Thus, Policy paragraphs 4(c)(i) and 4(c)(iii) are inapplicable. The Panel concludes that Complainant has made out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name.
Since Respondent is in default, and failed to provide any credible explanation for his registration of the disputed domain name, the Panel finds that the second requirement of the Policy is met. C. Registered and Used in Bad Faith
The Panel notes that Complainant's LOUIS XIII trademark covering a high quality premium brandy was first registered in France well over a century before the disputed domain name was registered. Complainant also has shown that it owns multiple registrations for the LOUIS XIII mark and other marks containing the "Louis XIII" term in numerous other jurisdictions worldwide, including in the United States, the country where Respondent is located according to information provided by the Registrar. All these registrations predate the registration of the disputed domain name by many years. The Panel also notes that the website at the disputed domain name was "parked", and listed various "sponsored links", including at least one link redirecting to a seller of alcoholic beverages apparently unrelated to Complainant. The Panel finds that Respondent was aware of Complainant and had its luxury LOUIS XIII product in mind at the time of registering the disputed domain name. In the circumstances of this case, this means that the disputed domain name was registered in bad faith.
As seen above, Respondent has "parked" the disputed domain name causing that Internet users - presumably looking for Complainant and its collection of LOUIS XIII premium brandies – are being shown several "Sponsored Listings" that redirect to websites, part of which belong to third parties apparently unrelated to Complainant. It is reasonable to infer that this redirection to various sites totally unrelated to Complainant or to Complainant's products, presumably generates income for Respondent. In the opinion of the Panel, by using the disputed domain name as shown, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of his website or of a product or service on his website or third party websites. According to Policy paragraph 4(b)(iv), this is a circumstance of registration and use of the disputed domain name in bad faith. Incidentally, the Panel also notes that on the website at the disputed domain name there is no evidence of any use consistent with Respondent's purported project of an online store marketing "jewelry and apparel" (as stated in his reply to Complainant's cease and desist letter).
The Panel also notes that Respondent Luis Cortes failed to reply to the Complaint. Finally, Mr. Cortes has provided uncomplete and/or false contact details, such as his complete address, which prevented the courier entrusted with delivering the notification of the Complaint. In the circumstances of this case, this is further evidence of bad faith.
The Panel concludes that the disputed 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 disputed domain name be transferred to Complainant.
Roberto Bianchi
Sole Panelist
Date: November 9, 2017
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