The Complainant is E. Remy Martin & C, France, represented by Tmark Conseils, France.
The Respondent is Ali Hameed, United Kingdom (or “UK”). 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 16, 2020. On December 16, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 17, 2020, 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 December 17, 2020, 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 December 21, 2020. 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 proceedings commenced on January 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 25, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 1, 2021. The Center appointed Willem J. H. Leppink as the sole panelist in this matter on February 5, 2021. 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 following facts are undisputed. The Complainant is part of the Remy Cointreau Group, a well-known French company that produces and sells cognac. One of the cognacs produced by the Complainant is the Louis XIII cognac. Complainant has been using the “LOUIS XIII” as a trademark for this product. It was officially first registered in France in 1880 and in the United States of America in 1878. The Complainant owns a large portfolio of trademarks comprising of the word element “louis” and “louis xiii”, including, but not limited to the International trademark “LOUIS XIII DE REMY MARTIN” no. 629594 with registration date January 4, 1995, and the European Union word mark “LOUIS XIII” no. 12035747 with registration date November 17, 2016. The above mentioned trademarks will hereinafter together be referred to, in singular, as the “Trademark”. The Domain Name was registered on November 20, 2017. The Domain Name resolves to a website that seems to offer a range of white-label products including protective masks against bacteria and viruses in the context of the current Covid-19 pandemic (“Website”). 5. Parties’ Contentions A. Complainant Insofar as relevant for deciding this matter, the Complainant contends the following. The Trademark enjoys a global reputation and is thus a well-known trademark. The Complainant is also the owner of various domain names that incorporate the word elements “louis” and/or “ louis xiii”. The Complainant’s official website can be found under “www.louisxiii-cognac.com”. The Domain Name is confusingly similar to the Trademark. The Domain Name incorporates the term “louis” of the Trademark. Despite that the Roman numeral number “xiii” is replaced by the word element “thirteen”, the Domain Name consists of a “misspelling”. Therefore, the Domain Name is phonetically identical and confusingly similar to the Complainant’s well-known Trademark. The Respondent has no rights or legitimate interests in the Domain Name. The Complainant asserts that at the time of the registration of the Domain Name, on November 20, 2017, the Respondent was not known as “louis thirteen” and had no trademark to justify the registration of the Domain Name whereas the Complainant has long standing rights in the trademarks which predate the registration of the Domain Name. There appears to be no legitimate reason why the Respondent would register a Domain Name that is confusingly similar to the Complainant’s well-known Trademark. The Domain Name is registered and is being used in bad faith. The Respondent is clearly aware of the Complainant’s activities and well-known and luxury Trademark and it is clear that the aim of the registration and use was to take advantage of the confusion and possible link or association between the Domain Name and the Complainant’s earlier well-known Trademark. B. Respondent The Respondent did not reply to the Complainant’s contentions, although it has accepted courier delivery of the documents sent to him by the Center. 6. Discussion and Findings Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements: (i) the Domain Name is identical or confusingly similar to a trademark 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. Noting the burden of proof on the Complainant, the Respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the Complainant is deemed to have prevailed. The Respondent’s default is not necessarily an admission that the Complainant’s claims are true. See in this regard WIPO Overview 3.0, section 4.3 “In cases involving wholly unsupported and conclusory allegations advanced by the complainant, or where a good faith defense is apparent (e.g., from the content of the website to which a disputed domain name resolves), panels may find that – despite a respondent’s default – a complainant has failed to prove its case. Further to paragraph 14(b) of the UDRP Rules however, panels have been prepared to draw certain inferences in light of the particular facts and circumstances of the case e.g., where a particular conclusion is prima facie obvious, where an explanation by the respondent is called for but is not forthcoming, or where no other plausible conclusion is apparent.” A. Identical or Confusingly Similar The Complainant must demonstrate that it has rights in a trademark or service mark and, if so, the Domain Name must be shown to be identical or confusingly similar to that mark. Based on the unrebutted evidence presented, it is beyond any doubt that the Complainant has rights in the Trademark. As set out in WIPO Overview 3.0, section 1.7, the first element functions primarily as a standing requirement. The threshold test for confusing similarity between the Domain Name and the Trademark involves a relatively straightforward comparison. In light of the foregoing, the Panel finds that the Domain Name is confusingly similar to the Trademark. The Domain Name consists of the element “louis”, which is identical to the first part of the Trademark, and is followed by the element “thirteen”. The Panel does not agree on the Complainants statement that the element “thirteen” is a misspelling of the Trademark. However, as set out in WIPO Overview 3.0, section 1.14, a domain name that consists of a translation of a trademark will normally be found to be identical or confusingly similar to such trademark. See The Coca-Cola Company v. Keren, Chen,WIPO Case No. D2008-1852 and Compagnie Générale Des Etablissements Michelin – Michelin & Cie v. Graeme Foster,WIPO Case No. D2004-0279. In this case, “thirteen” is the literal English translation of the Roman number “xiii”. In light of the foregoing, the Panel finds that the Domain Name is confusingly similar to the Trademark. Therefore, the Panel is satisfied that the first element of the Policy is met. B. Rights or Legitimate Interests The Respondent has not submitted a response to the Complaint, in the absence of which the Panel – as mentioned above – may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. The Panel has carefully reviewed the record in this case. Also in light of the extensive evidence provided by Complainant and earlier domain name disputes pertaining to the Trademark, such as E. Remy Martin & C v. Christopher MacNaughton,WIPO Case No. D2018-2106 and E. Remy Martin & C. v. Mark Pellicane, First World Trade Corp.,WIPO Case No. D2017-1811, it is beyond doubt that the Trademark enjoys a broad scope of protection. As mentioned under section 5.A above, the Complainant asserts that at the time of the registration of the Domain Name, on November 20, 2017, the Respondent was not known as “louis thirteeen” and had no trademark to justify the registration of the Domain Name whereas the Complainant has long standing rights in the trademarks which predate the registration of the Domain Name. Also lacking a Response, the Panel has to assess whether there is no right or legitimate interest. In particular the Panel has to assess whether circumstances set forth in paragraph 4(c) of the Policy, would apply such as: (i) use or preparation to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services prior to notice of the dispute; or (ii) being commonly known by the Domain Name (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or (iii) making 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. On the Website, the Respondent offers protective masks against bacteria and viruses in the context of the current Covid-19 pandemic, in addition to products such as credit card holders, keychains, lighters, and more. When reviewing the different webpages of the Website, the Panel draws the conclusion that the Website at first sight seems to relate to a genuine offering of white-label goods. The Panel can at least not draw the conclusion that the Website would not relate to a genuine offering of goods. The website includes legally required information such as contact information, street address, company registration and VAT numbers. A brief Internet search by the Panel leads to a company registration at the UK Companies House for the Louis Thirteen Group Limited, incorporated on June 12, 2019, i.e., 18 months before the Complaint was filed. The Respondent is the director of this company. As such, this could support a claim to a bona fide offering of goods or services in the sense of the Policy. Although the Panel certainly recognizes that the Trademark enjoys broad protection possibly even as a famous mark, it is without further substantiation not a given that the Complainant could oppose the use of the trade name “louis thirteen” for these particular activities by the Respondent that do not according to the evidence before the Panel have any link to the activities of the Complainant (see Privity Pty. Ltd. V. Whois Agent, Domain Protection Serviced, Inc. / Rightside Group, Ltd., WIPO Case No. D2020-2742). Within the European Union and the United Kingdom, the owner of a mark with a reputation can only oppose the use of its mark with a reputation provided that the use by the third party takes unfair advantage of, or is detrimental to, the distinctive character or the repute of that mark. Prima facie, the Respondent may have a good faith defense as also outlined in WIPO Overview 3.0, section 4.3, i.e., “[…] where a good faith defense is apparent (e.g., from the content of the website to which a disputed domain name resolves), panels may find that – despite a respondent’s default – a complainant has failed to prove its case.” Before the Complainant acted against this Domain Name through these proceedings, the Respondent seems to have incorporated a company under the name “louis thirteen”, following the registration of the Domain Name. On a balance, the Panel, therefore, finds that the Complainant has not met its burden of proof as there is a genuine possibility that the name that corresponds to the Domain Name is used in connection with a bona fide offering of goods or services prior to notice of the dispute. The Panel notes that the decision does not affect Complainant’s rights to initiate an action based on trademark infringement against the Respondent in a court of law if it considers that appropriate. The Panel also notes that based on the limited evidence of record, Complainant’s claims to enjoy a reputation as a famous mark, and moreover the inferences it is suggested the Panel should draw therefrom, would require an assessment of relevant trademark law principles and jurisprudence that goes beyond the scope of this proceeding under the Policy. Had Complainant put forward clear evidence that it had registrations for, and engaged in commercial activity in relation to the goods seemingly sold by Respondent, that may have triggered a different analysis; but that is not before the Panel. In summary, the Panel concludes that paragraph 4(a)(ii) of the Policy has not been satisfied. C. Registered and Used in Bad Faith Given the fact that the second element has not been satisfied, the Panel need not assess whether the Domain Name was registered and is being used in bad faith. 7. Decision For the foregoing reasons, the Complaint is denied. Willem J. H. Leppink
Sole Panelist
Date: February 19, 2021
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