WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

E. REMY MARTIN & C° v. Zhou Lin Jie

Case No. D2015-1860

1. The Parties

The Complainant is E. REMY MARTIN & C° of Cognac, France, represented by Nameshield, France.

The Respondent is Zhou Lin Jie of Guangzhou, Guangdong, China.

2. The Domain Name and Registrar

The disputed domain name <remymartin.xyz> is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 19, 2015. On October 19, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 21, 2015, 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.

On October 26, 2015, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On the same day, the Complainant submitted a request that English be the language of the proceeding. The Respondent 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 Respondent of the Complaint in both Chinese and English, and the proceeding commenced on November 11, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 1, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 2, 2015.

The Center appointed Sok Ling MOI as the sole panelist in this matter on December 11, 2015. 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 France-based company founded in 1724, and a branch of of the REMY COINTREAU Group engaged in producing and distributing alcoholic beverages worldwide. The Complainant is specialized in the production of premium quality cognacs. The REMY MARTIN trade mark is the trade mark used to designate each cognac of the whole collection, namely: REMY MARTIN VSOP, REMY MARTIN XO, REMY MARTIN 1738 ACCORD ROYAL, REMY MARTIN CLUB, REMY MARTIN CENTAURE, REMY MARTIN CENTAURE DE DIAMANT and LOUIS XIII DE REMY MARTIN. The first batch of REMY MARTIN cognac was sent to China in the late 1880's.

The Complainant owns numerous trade mark registrations for REMY MARTIN in several countries, including the following. The REMY MARTIN trade mark was officially registered in France first in 1877, and in China in 1931.

The Complainant is the registrant of the domain name <remymartin.com> (registered on September 25, 1997) and it owns and operates a website under that domain name. The Complainant has also registered numerous other domain names incorporating the trade mark REMY MARTIN, such as:

The disputed domain name <remymartin.xyz> was registered on February 4, 2015 by the Respondent, long after the Complainant first used and/or registered its trade mark REMY MARTIN in France and other countries. The disputed domain name does not resolve to any active website.

5. Parties' Contentions

A. Complainant

REMY MARTIN is one of the most popular cognac brands in the world and a symbol of the French lifestyle all around the world where 95 % of the production is sold. The fame of the REMY MARTIN name associated to its centaur logo design has spread gradually from the west to the east and has become a benchmark of quality everywhere and particularly in Asia where the first batch of cognac was sent to China in the late 1880's.

The Complainant owns numerous trade mark registrations with the expression REMY MARTIN in several countries. The trade mark REMY MARTIN is known especially in China in relation with the Complainant.

A1. The disputed domain name is identical to the Complainant's prior trade mark REMY MARTIN:

The addition of the suffix new generic Top-Level Domain ("gTLD") ".xyz" is not sufficient to escape the finding that the disputed domain name is identical to the Complainant's trade mark REMY MARTIN and does not change the overall impression of the designation as being connected to a trade mark of the Complainant.

Previous UDRP panels have found <remymartin.pub>, <remymartin.wang>, <remymartin.mobi> and <remymartin.net> to be identical to the Complainant's trade mark REMY MARTIN (See E. Remy Martin & C° v. Brave_leng, WIPO Case No. D2015-1123; E. REMY MARTIN & Co. v. wangqiong, WIPO Case No. D2014-1890; E. Remy Martin & Co. v. Yanglijun, WIPO Case No. D2013-2032 and Remy Cointreau Holding Company, Remy Martin & Cie, Cointreau SA v. Greenhouse Inc., WIPO Case No. D2001-1085).

A2. The Respondent has no rights or legitimate interests in respect of the disputed domain name:

The Respondent is not related in any way with the Complainant. The Complainant does not carry out any activity for, nor has any business with the Respondent. Neither licence nor authorization has been granted to the Respondent to make any use, or apply for registration of the disputed domain name by the Complainant.

Past panels have held that a Respondent was not commonly known by a disputed domain name if the WhoIs information was not similar to the disputed domain name. Thus, the Respondent is not known as "Remy Martin" but as "Zhou Lin Jie".

Furthermore, the website in connexion with the disputed domain name <remymartin.xyz> has been inactive since its registration. Indeed, the Respondent could not have used the disputed domain name without infringing the Complainant's intellectual property rights on the expression REMY MARTIN.

A3. The disputed domain name was registered and is being used in bad faith:

The Complainant contends that its trade mark is so widely-known and so recognised, and has been used in China and other countries for so many years, that there is no likely legitimate right or plausible use possible by the Respondent.

The passive holding, under the appropriate circumstances, amounts to use of the domain name in bad faith, particularly where the domain name in question contains a well-known trade mark.

Finally, in his response to the cease and desist letter sent to him, the Respondent proposed to sell the disputed domain name to the Complainant. This proves that the Respondent had registered the disputed domain name only in order to make profits on it.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

6.1. Language of the Proceeding

Pursuant to 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, having regard to the circumstances of the administrative proceeding.

Paragraph 10(b) and (c) of the Rules requires the Panel to ensure that the proceeding takes place with due expedition and that the parties are treated fairly and given a fair opportunity to present their respective case.

The language of the Registration Agreement for the disputed domain name is Chinese. From the evidence on record, no agreement appears to have been entered into between the Complainant and the Respondent regarding the language issue. The Complainant filed its Complaint in English and has requested that English be the language of the proceeding.

On the record, the Respondent appears to be a Chinese individual and is thus presumably not a native English speaker, but the Panel finds persuasive evidence in the present proceeding to suggest that the Respondent has sufficient knowledge of English. In particular, the Panel notes that:

(a) the disputed domain name is registered in Latin characters, rather than Chinese script;

(b) the Respondent had previously responded to the Complainant's cease and desist letter in English; and

(c) the Respondent has registered numerous other domain names comprising Latin characters, e.g., <animal.city>, <maze.city>, <cartoon.city>, <harbour.city>, <demon.city>, <devil.city>, <glamour.city>, <miracle.city>, <boss.city> and <domainname.city>, based on a reverse WhoIs search independently conducted by the Panel using the Respondent's email address.

Additionally, the Panel notes that:

(a) the Center has notified the Respondent of the proceeding in both Chinese and English;

(b) the Respondent has been given the opportunity to present its case in this proceeding and to respond to the issue of the language of the proceeding but has chosen not to do so; and

(c) the Center informed the Respondent that it would accept a Response in either English or Chinese.

Considering the above circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case. To require the Complaint and all supporting documents to be re-filed in Chinese would in the circumstances of this case cause an unnecessary cost burden to the Complainant and unfairly disadvantage the Complainant. The proceeding would be unnecessarily delayed.

Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that (i) it shall accept the Complaint and all supporting materials as filed in English; and (ii) English shall be the language of the proceeding and the decision will be rendered in English.

6.2. Discussion and Findings

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following three elements to obtain an order for the disputed domain name to be transferred:

(i) the disputed domain name registered by the Respondent is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

On the basis of the evidence introduced by the Complainant, the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel accepts that the Complainant has rights in the REMY MARTIN name and mark by virtue of its use and registration of the same as a trade mark.

The disputed domain name incorporates the Complainant's trade mark REMY MARTIN in its entirety with no modifications. The addition of the gTLD ".xyz" does not impact on the analysis of whether the disputed domain name is identical or confusingly similar to the Complainant's trade mark.

Consequently, the Panel finds that the disputed domain name is identical to the Complainant's trade mark.

Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant bears the burden of establishing that the Respondent lacks rights or legitimate interests in the disputed domain name. However, once the Complainant makes a prima facie showing under paragraph 4(a)(ii), the burden of production shifts to the Respondent to establish its rights or legitimate interests in the disputed domain name by demonstrating any of the following, without limitation, under paragraph 4(c) of the Policy:

(i) before any notice to it of the dispute, the Respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) the Respondent has been commonly known by the disputed domain name, even if it has acquired no trade mark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

See Taylor Wimpey PLC, Taylor Wimpey Holdings Limited v. honghao internet foshan co, ltd, WIPO Case No. D2013-0974.

There is no evidence suggesting that the Respondent (with the name of "Zhou Lin Jie") is commonly known by the disputed domain name or that the Respondent has any rights in the term "Remy Martin". The Complainant has also confirmed that that the Respondent is not in any way affiliated with the Complainant or otherwise authorized or licensed to use the trade mark REMY MARTIN.

The Panel is satisfied that the Complainant has made out a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name. The burden of production thus shifts to the Respondent to establish his rights or legitimate interests in the disputed domain name.

The Respondent has however failed to file a Response. As the disputed domain name does not resolve to any active website, there is no evidence before the Panel that the Respondent has made any use of the disputed domain name in connection with any bona fide offering of goods or services or any other noncommercial or fair use of the same. Since no response was filed, the prima facie case has not been rebutted.

Accordingly, the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:

(i) circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the disputed domain name; or

(ii) the Respondent has registered the disputed domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's websites 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 the Respondent's websites or location or of a product or service on the Respondent's website or location.

The Panel notes that the disputed domain name has not resolved to any active website since its registration in February 2015. Nevertheless, the consensus view of previous UDRP panels is that passive holding in itself does not preclude a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 3.2.

The Complainant has a strong Internet presence and has had a business presence in China since the 1880's. A cursory Internet search would have disclosed the trade mark REMY MARTIN and its use by the Complainant. The Panel accepts that the Complainant's trade mark REMY MARTIN is distinctive and widely known throughout the world. Thus a presumption arises that the Respondent was aware of the Complainant's trade mark REMY MARTIN and related domain names when he registered the disputed domain name.

Previous UDRP panels have held that the incorporation of a famous trade mark into a domain name, coupled with an inactive website, may be prima facie evidence of bad faith registration and use. The Panel agrees with this holding and determines that the Respondent's intention in registering the disputed domain name is to unfairly attract Internet users to its website by creating a likelihood of confusion with the Complainant's mark as to source, sponsorship, affiliation, or endorsement of the Respondent's website. As such, the Panel is satisfied that the Respondent has intention to use the disputed domain name for mala fide purpose and illegitimate financial gain, and the Panel finds that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case.

According to evidence furnished by the Complainant, the Respondent had on October 1, 2015, upon receiving the Complainant's cease and desist letter of September 22, 2015, offered to sell the disputed domain name to the Complainant. An offer to sell a domain name without more does not conclusively show bad faith in all circumstances. Here, in light of all the other relevant circumstances that adequately allow this Panel to conclude that the Respondent has registered and used the disputed domain names in bad faith, the Panel finds that such an offer is a further indication of the Respondent's bad faith.

Taking into account all the circumstances, it is adequate to conclude that the Respondent has registered and used the disputed domain name in bad faith.

Accordingly, the Complainant has satisfied the requirements of the third element under paragraph 4(a) 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, <remymartin.xyz>, be transferred to the Complainant.

Sok Ling MOI
Sole Panelist
Date: December 25, 2015