WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

E. Remy Martin & C° v. shen zhen shi guang yue yan jiu you xian gong si

Case No. D2019-2941

1. The Parties

The Complainant is E. Remy Martin & C°, France, represented by Tmark Conseils, France.

The Respondent is shen zhen shi guang yue yan jiu you xian gong si, China.

2. The Domain Name and Registrar

The disputed domain name <louisxiii9.com> is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 29, 2019. On November 29, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 3, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed 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 4, 2019 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 6, 2019.

On December 4, 2019, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding on December 6, 2019. The Respondent did not comment on the language of the proceeding.

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 December 17, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 6, 2020. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on January 8, 2020.

The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on January 20, 2020. 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 member of the Remy Cointreau group of companies, which produces a range of alcoholic beverages, liqueurs, and cognac, and is headquartered in France. The Complainant commercializes a luxury line of cognac beverages under the trademark LOUIS XIII.

The Complainant owns a portfolio of trademarks protecting LOUIS XIII (word and device marks), including, amongst others, the following trademark registrations: French trademark registration 3980114, registered on February 5, 2013; and Chinese trademark registration number 12160294, registered on July 28, 2014. The Complainant also owns trademarks protecting the 路易十三 mark (LOUIS XIII in Chinese characters), which is also relevant to this case, see for instance Chinese trademark registration 9223392, registered on March 17, 2011. The Complainant furthermore owns a large portfolio of domain names, including <louisxiiicognac.com>. The disputed domain name was registered on November 25, 2018, and is linked to an active webpage, leading to a website offering resales services of purported Louis XIII-branded alcoholic beverages, without the authorization of the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant essentially contends that the disputed domain name is confusingly similar to its trademark for LOUIS XIII, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered, and is being used in bad faith.

The Complainant contends that its trademarks are famous and well-regarded in the food and beverages sector, and provides evidence of its marketing materials, including the contents of its official website. The Complainant also provides a number of prior UDRP decisions in which the respective panels have accepted that the Complainant’s trademark LOUIS XIII is a well-known trademark (see for instance 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). Moreover, the Complainant provides evidence that the disputed domain name is linked to an active webpage offering resale services to the public for purported Louis XIII-branded alcoholic beverages, throughout a number of locations in Guangdong Province, China. The Complainant essentially contends that such use does not confer any rights or legitimate interests in respect of the disputed domain name, and constitutes use in bad faith.

The Complainant requests the transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

6.1. Preliminary Issue: Language of proceedings

Pursuant to paragraph 11(a) of the Rules, the language of the administrative proceedings shall be the language of the Registration Agreement. However, the Panel is given the authority to determine a language of proceeding other than the language of the Registration Agreement, taking into account the circumstances of every individual case.

The Complainant states in its Complaint that, to the best of its knowledge, the Registration Agreement is written in Chinese. Nevertheless, the Complainant filed its Complaint in English, including a motivated request that the language of proceedings be English. On December 4, 2019, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding on December 6, 2019. The Respondent did not comment on the language of the proceeding.

The Panel has carefully considered all elements of this case, in particular: the Complainant's request that the language of the proceeding be English; the lack of comment on the language of the proceeding and the lack of response on the merits of the Respondent (the Panel notes that the Respondent was given the opportunity to put forward arguments in either English or Chinese); the fact that the website linked to the disputed domain name uses English words for its tabs in the address bar (for example “about us” “product”, “news” etc.); and the fact that Chinese as the language of proceedings could lead to unwarranted delays and costs for the Complainant. In view of all these elements, the Panel rules that the language of proceedings shall be English.

6.2. Discussion and Findings on the merits

The Policy requires the Complainant to prove three elements:

(i) the disputed domain name is identical or confusingly similar to a trademark 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.

Based on the evidence and arguments submitted, the Panel’s findings are as follows:

A. Identical or Confusingly Similar

The Panel finds that the Complainant has shown that it has valid rights in the sign LOUIS XIII based on its intensive use and registration of the same as a trademark in several jurisdictions, incidentally commencing several years prior to the registration of the disputed domain name.

Moreover, as to confusing similarity, the disputed domain name consists of the Complainant’s registered trademark LOUIS XIII, combined with the seemingly arbitrary number “9”. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7, states: “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing” (see also Wal-Mart Stores, Inc. v. Richard McLeod d/b/a For Sale, WIPO Case No. D2000-0662). The Panel concludes that the disputed domain name contains the entirety of the Complainant’s trademark, as its only distinctive feature. The addition of the seemingly arbitrary number “9” does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark. Accordingly, the Panel rules that the disputed domain name is confusingly similar to the Complainant’s registered trademark, and that the Complainant has satisfied the requirements of the first element under the Policy.

B. Rights or Legitimate Interests

On the basis of the evidence and arguments submitted, the Panel holds that the Complainant makes out a prima facie case that that the Respondent is not, and has never been, an authorized reseller, service provider, licensee, or distributor of the Complainant, and is not making legitimate noncommercial use or fair use of the Complainant’s trademarks. As such, the Panel finds that the burden of production regarding this element shifts to the Respondent (see WIPO Overview 3.0, section 2.1). However, no evidence or arguments have been submitted by the Respondent in reply. Moreover, the Panel notes that the disputed domain name directs to a webpage offering resale services to the public for purported Louis XIII-branded alcoholic beverages, without authorization from the Complainant. This shows the Respondent’s intention to divert consumers for commercial gain to its website linked to the disputed domain name, by taking unfair advantage of the goodwill and reputation of the Complainant’s trademarks for LOUIS XIII.

Furthermore, the Panel notes that the nature of the disputed domain name, being confusingly similar to the Complainant’s trademarks, carries a high risk of implied affiliation with the Complainant (see also WIPO Overview 3.0, section 2.5.1), and that the Respondent is not commonly known by the disputed domain name.

On the basis of the foregoing, the Panel considers that none of the circumstances of rights or legitimate interests envisaged by paragraph 4(c) of the Policy apply, and that the Complainant has satisfied the requirements of the second element under the Policy.

C. Registered and Used in Bad Faith

The registration of the disputed domain name, which is confusingly similar to the Complainant’s trademarks, was clearly intended to mislead and divert consumers away from the Complainant’s official websites, to the disputed domain name. Given the distinctiveness and fame of the Complainant’s trademark, including in the Respondent’s home jurisdiction of China, the Panel holds that the registration of the disputed domain name, targeting the Complainant’s well-known trademarks, was obtained in bad faith. Moreover, even a cursory Internet search at the time of registration of the disputed domain name would have made it clear to the Respondent that the Complainant owned registered trademarks in LOUIS XIII and used these extensively. In the Panel’s view, the preceding elements clearly establish the bad faith of the Respondent in registering the disputed domain name.

As to use of the disputed domain name in bad faith by the Respondent, the website linked to the disputed domain name currently redirects Internet users to a webpage offering resale services to the public for purported Louis XIII-branded alcoholic beverages, without the Complainant’s authorization. The Panel holds that this means that the Respondent intentionally attempts to attract Internet users, for commercial gain, to the disputed domain name, by creating consumer confusion between the disputed domain name and the Complainant’s trademarks. Moreover, the Panel notes that the Respondent uses the Complainant’s 路易十三 trademark (LOUIS XIII in Chinese characters) prominently and extensively on the website linked to the disputed domain name, including in the website’s banner, and also prominently displays pictures of the Complainant’s products, thereby suggesting at least a formal business connection between the Complainant and the Respondent. The Panel holds that this is clear evidence that the Respondent is using the disputed domain name in bad faith.

Finally, the Respondent has failed to provide any response or evidence to establish its good faith or absence of bad faith. The Panel therefore rules that the Complainant has satisfied the requirements of the third element under 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 <louisxiii9.com> be transferred to the Complainant.

Deanna Wong Wai Man
Sole Panelist
Date: February 3, 2020