WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pernod Ricard, SA v. Zhaoxingming

Case No. DCC2018-0017

1. The Parties

The Complainant is Pernod Ricard, SA of Paris, France, internally represented.

The Respondent is Zhaoxingming of Huai’an, Jiangsu, China.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on November 13, 2018. On November 14, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 15, 2018, 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 November 16, 2018, 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 November 16, 2018.

On November 16, 2018, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on the same day. 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 in English and Chinese of the Complaint, and the proceedings commenced on November 27, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 17, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 18, 2018.

The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on January 3, 2019. 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 Pernod Ricard, S.A. (“Pernod Ricard”) is a company founded in 1975 through the merger of the French companies Ricard S.A. and Pernod S.A. Individually, the PERNOD brand and the PICARD brand were well known in France and internationally as a symbol of French traditional spirit drinks. The Complainant has gradually grown during the last 40 years to become an international company operating worldwide and the co-leader in the Wines and Spirits industry. Pernod Ricard has a large portfolio of premium international and local brands, including ABSOLUT vodka, BALLANTINE’S Scotch whisky, CHIVAS REGAL Scotch whisky, JAMESON Irish whiskey, HAVANA CLUB Cuban rum, MALIBU rum, MARTELL Cognac of the GH MUMM and PERRIER-JOUET Champagnes.

Pernod Ricard is also the ultimate holding company of a Group of companies, most of them doing business under the name Pernod Ricard combined with the name of their country of operation (Pernod Ricard Deutschland, Pernod Ricard Romania, Pernod Ricard Brazil, Pernod Ricard Japan, etc.).

The Complainant is the owner of multiple trademark registrations for the PERNOD RICARD mark.

Additionally, the Complainant holds registered domains names incorporating the PERNOD RICARD mark in order to promote its brand and services, including <pernod-ricard.com>, <pernodricard.com>, <pernod-ricard.cn>, <pernodricard.cn>, <pernod-ricard.info> and <pernodricard.info>.

The disputed domain name <pernodricard.cc> was registered on July 1, 2017. The disputed domain name resolves to a generic parking page as of the date of this decision, displaying links in English related to the Pernod Ricard brand and associated products.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s PERNOD RICARD mark. The Complainant has rights in the PERNOD RICARD mark by virtue of its trademark registrations. When comparing the disputed domain name to the Complainant’s trademark, the comparison should be made to the second-level portion of the disputed domain name only. The generic Top-Level Domain (“gTLD”) “.cc” should not be considered. The disputed domain name consists entirely of the PERNOD RICARD mark. This indicates that the Respondent intended the disputed domain name to be identical to the Complainant’s trademark.

The Complainant also contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not sponsored by or affiliated with the Complainant. The Complainant has not given the Respondent permission to use the Complainant’s trademarks in any manner, including in domain names. The Respondent is not commonly known by the disputed domain name. The Respondent is not making a bona fide offering of goods or services, or legitimate, noncommercial fair use of the disputed domain name.

Finally, the Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. The Complainant’s PERNOD RICARD mark is well known and have been in use since 1975, well before the Respondent registered the disputed domain name. By registering a domain name that incorporates the Complainant’s PERNOD RICARD mark in its entirety, the Respondent has created a domain name identical to the Complainant’s mark and to the Complainant’s own main domain name <pernodricard.com>. The PERNOD RICARD mark is so associated with the Complainant that the Respondent’s use of it strongly implies bad faith. At the time of registration of the disputed domain name, the Respondent knew, or at least should have known, of the existence of the Complainant’s trademarks and that registration of domain names containing well-known trademarks constitutes bad faith per se.

Bad faith use can be established by evidence demonstrating that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by using the disputed domain name to create a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website, products or services. The Respondent is creating a likelihood of confusion by using the Complainant’s trademark in a domain name where the mark is the only feature and attempting to profit from such confusion by using the disputed domain name to direct users to a parking page with pay-per-click links.

The Complainant requests that the disputed domain name be transferred to it.

B. Respondent

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

6. Discussion and Findings

6.1 Language of Proceedings

The Complaint was filed in English, while the language of the registration agreement is Chinese. Paragraph 11(a) of the Rules provides that "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 require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. For the purpose to determine the language of the proceeding, the Panel notes the following circumstances in this case:

(1) the disputed domain name consists of Latin letters, and the website to which the disputed domain name resolves is in English, from which it is reasonable to infer that the Respondent has a certain knowledge of English;

(2) the Center sent all the case related communications in English and Chinese, and the Respondent didn't comment on the language of the proceeding or submit any reply; and

(3) to require the Complainant to translate all the documents to Chinese will cause unnecessary burden to the Complainant and undue delay to the proceeding.

Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding be English.

6.2 Substantive Matters

The Policy provides for transfer or cancellation of the disputed domain name if the Complainant establishes each of the following elements set out in paragraph 4(a) of the Policy:

(i) The disputed 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 disputed domain name; and

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

A. Identical or Confusingly Similar

The Complainant has rights in the PERNOD RICARD mark. The Complainant has established that it is the owner of trademark registrations of the PERNOD RICARD mark in many jurisdictions.

The disputed domain name comprises the element “pernodricard” and the ccTLD “.cc”. As a technical part of a domain name, the “.cc” ccTLD may be disregarded in determining confusing similarity. Alienware Corporation v. Truther, WIPO Case No. DCO2012-0027; Belo Corp. v. George Latimer, WIPO Case No. D2002-0329. The Complainant’s PERNOD RICARD mark remains the sole part of the disputed domain name. Accordingly, the disputed domain name is identical to the Complainant’s trademark.

B. Rights or Legitimate Interests

As noted above, the Complainant has provided evidence of its prior rights in the PERNOD RICARD mark. These rights precede the creation of the disputed domain name.

The disputed domain name <pernodricard.cc> incorporates the Complainant’s trademark in its entirety. There is no evidence indicating that the Respondent is licensed to use the Complainant’s PERNOD RICARD mark, that the Respondent is associated or affiliated with the Complainant, or that the Respondent has any other rights or legitimate interests in the string “pernodricard” or variants thereupon. As such, the Complainant has made out its prima facie case, which the Respondent has not rebutted.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular, but without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith:

(i) Circumstances indicating that the respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that 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 trademark 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 website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of such website or location or of a product or service on such website or location.

The present case falls squarely within that contemplated by paragraph 4(b)(iv) of the Policy.

As contemplated by the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), panels have generally held that a respondent cannot disclaim responsibility for content “automatically” generated (e.g., pay-per-click links) appearing on the website associated with its domain name. See Section 3.5 of WIPO Overview 3.0. As such, the Panel considers the Respondent to be using the disputed domain name to link to a website promoting and offering competing services.

The Respondent registered the disputed domain name in bad faith. The Respondent undoubtedly was aware of the Complainant and its PERNOD RICARD mark at the time of registration of the disputed domain name and that such registration was in bad faith. The Complainant and its PERNOD RICARD mark are widely known throughout the world. Additionally, the Complainant owns several trademark registrations, including in China where the Respondent is located. Although the Respondent may not be under an obligation to conduct an exhaustive trademark search before registering the disputed domain name, a simple Internet search for “Pernod Ricard” (or either “Pernod” or “Ricard” as individual search terms) would have yielded many obvious references to the Complainant. The Respondent must have had the Complainant’s famous trademark in mind when the Respondent registered the disputed domain name, as evidenced by the Respondent’s use of the disputed domain name to direct Internet users to a website offering services that compete with those of the Complainant. See Balenciaga v. liu zhixian, zhixian liu, WIPO Case No. D2010-1831. The Respondent’s registration of the disputed domain name incorporating the Complainant’s mark, being fully aware of the Complainant’s rights in the mark, without any rights or legitimate interests in doing so is registration in bad faith. See, e.g., Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320; The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113.

The Respondent also uses the disputed domain name in bad faith. By using the disputed domain name to link to a website that promotes and offers competing services, the Respondent conveyed the impression that the Respondent’s website was affiliated with or created, endorsed or sponsored by the Complainant. See Dow Jones & Company, Inc. v. Down Johns Update, WIPO Case No. D2000-0495. The Respondent’s website does not offer any statements indicating that the Respondent and the website lack affiliation with the Complainant. The Respondent has intentionally attempted to attract Internet users to the Respondent’s website for commercial gain by creating a likelihood of confusion with the Complainant’s PERNOD RICARD mark as to the source, sponsorship, affiliation, or endorsement of such website. These activities amount to bad faith use of the disputed domain name pursuant to paragraph 4(b)(iv) of the Policy. See id.

For this reason, the Panel finds that the Respondent’s registration and use of the disputed domain name is 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 <pernodricard.cc> be transferred to the Complainant.

Kimberley Chen Nobles
Sole Panelist
Date: January 9, 2019