WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

E. Remy Martin & Co v. Wei Li

Case No. D2011-2160

1. The Parties

The Complainant is E. Remy Martin & Co of Cognac, France, represented by Nameshield, France.

The Respondent is Wei Li of Nanjing, China.

2. The Domain Name and Registrar

The disputed domain name <人头马.net> is registered with Web Commerce Communications Limited dba WebNic.cc (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 8, 2011. On December 8, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 9, 2011, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center sent an email communication to the Complainant on December 12, 2011 regarding the annexes to the Complaint. The Complainant filed an amended Complaint on December 12, 2011.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 23, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 12, 2012. On December 27, 2011, December 28, 2011, December 29, 2011, and February 13, 2012, the Respondent sent emails to the Center, providing its alternative email address for further communication. The Respondent did not submit any formal Response. Accordingly, the Center acknowledged receipt of the Respondent’s communications and updated the status of the proceeding on January 13, 2011.

The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on January 31, 2012. 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

A. Complainant

The Complainant is a company incorporated in France producing and selling high quality cognacs and liquors and the owner of registrations in China for the trade mark人头马 (the “Trade Mark”), the earliest registration dating from October 28, 1996. The Trade Mark has been recognized as a well-known trade mark in China by the Trade Mark Office of The State Administration for Industry and Commerce of the People’s Republic of China.

B. Respondent

The Respondent is an individual apparently with an address in China.

C. The Disputed Domain Name

The disputed domain name was registered on July 18, 2006.

5. Parties’ Contentions

A. Complainant

The Complainant made the following submissions in the Complaint.

The Complainant and its predecessors in title have been producing and selling high quality cognacs and liquors since 1724. The Complainant sells 95% of its products outside France.

The Trade Mark is well-known in China. The Trade Mark, which literally means “man head horse”, is the Chinese language translation of the Complainant’s Remy Martin Centaur Logo. Persons in China associate the Trade Mark exclusively with the Complainant.

The disputed domain name is confusingly similar to the Trade Mark. It comprises the Trade Mark in its entirety.

The disputed domain name is resolved to an inactive website.

The Respondent has no rights or legitimate interests in the disputed domain name and has registered and used the disputed domain name in bad faith.

B. Respondent

The Respondent did not formally reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration which predate the date of registration of the disputed domain name by several years.

The disputed domain name contains the Trade Mark in its entirety.

The Panel finds that the disputed domain name is confusingly similar to the Trade Mark.

The Panel therefore holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:

“(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 organisation) have been commonly known by the domain name even if you have acquired no trade mark 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 trade mark or service mark at issue.”

There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondent’s registration of the disputed domain name by several years. There is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption (Do The Hustle, LLC v.Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).

From the evidence filed with the Complainant, the disputed domain name is not being used. There is no evidence that the Respondent has ever resolved the disputed domain name to an active website.

The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name is used in connection with a bona fide offering of goods or services.

There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.

There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.

The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Complaint fulfills the second condition of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

It is trite, under UDRP jurisprudence, that passive holding, under the appropriate circumstances, falls within the concept of the domain name being used in bad faith, particularly where the domain name in question contains a well-known trade mark, as is the case in this proceeding (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Action S.A. v. Robert Gozdowski, WIPO Case No. D2008-0028; CBS Broadcasting, Inc. v. Dennis Toeppen, WIPO Case No. D2000-0400). The Panel finds, in the circumstances of this case, the fact the disputed domain has been passively held by the Respondent supports a finding bad faith on the part of the Respondent.

The Panel therefore finds the requisite element of bad faith has been satisfied.

Given the circumstances of this case, the Panel also considers the failure of the Respondent to file a Response amounts to a further indication of bad faith (Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787).

For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <人头马.net> be transferred to the Complainant.

Sebastian M.W. Hughes
Sole Panelist
Dated: February 14, 2012