In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the World Intellectual Property Organization (WIPO), a cognac producer successfully obtained the transfer of 10 domain names reproducing its brand under the .TOP and .VIP new generic Top Level Domains (gTLDs).
The .TOP gTLD is one of the many gTLDs recently launched by ICANN. It was delegated into the root on 3 August 2014 and became available for general registration on 18 November 2014 following a Sunrise Period for trade mark holders that opened on 15 October 2014 and closed on 15 November 2014. There are currently over 4 million domain name registrations under the .TOP gTLD, making it the second largest new gTLD. The .VIP gTLD was delegated into the root on 25 November 2015 and became available for registration after a Sunrise period that opened on 10 March 2016 and closed on 9 May 2016. There are almost half a million domain name registrations under the .VIP gTLD, making it the eighth largest gTLD.
The Complainant was E. Remy Martin & Company, a company based in France that produces and sells cognacs and liquors. It is the owner of a number of trade mark registrations worldwide, including in China, for REMY MARTIN, LOUIS XIII and LOUIS XIII DE REMY MARTIN. The REMY MARTIN trade marks have been registered since at least 2 December 1978 and are used to designate the Complainant’s cognac products. The Complainant’s REMY MARTIN cognac was first introduced to China in the late 1880s. The LOUIS XIII trade mark has been registered in China since 28 July 2014.
The Respondent was Lan Qing Tian (also known as Qingtian Lan), an individual based in China.
The Respondent had registered the domain names <louisxiiicognac.top>, <louisxiiicognac.vip>, <louisxiii.vip>, <louisxiii1874.top>, <louisxiii1874.vip>, <remy-martin.top>, <remy-martin.vip>, <remymartin1724.com>, <remymartin1724.top> and <remymartin1724.vip> (the Domain Names).
The Domain Names were registered between 17 and 25 May 2016. At the time of filing of the Complaint, they were not resolving, although at the time of writing of the decision, the Domain Name <louisxiii.vip> was pointing to a page containing information in Chinese about King Louis XIII of France.
To be successful in a complaint under the UDRP, a complainant must satisfy the following three elements:
(i) The domain name registered by the respondent is identical or confusingly similar to a trade mark 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.
Prior to examining each of the requirements set out above, the Panel considered the issue of the language of the proceedings. Pursuant to paragraph 11 of the UDRP Rules, the language of the proceedings is generally the language of the Registration Agreement, unless the parties agree otherwise. However, a panel has the discretion to designate a different language, taking into consideration the circumstances surrounding the case such as the parties’ nationality and the language of the website associated with the disputed domain name, among other factors.
In the present case, the language of the Registration Agreement was Chinese. The Complainant requested that English be the language of the proceedings based on the grounds that (a) English was the most widely used language in international relations; (b) the Domain Names were registered in Roman characters (ASCII); (c) the Respondent appeared to understand English given that he responded to the Complainant’s cease and desist letter; and (d) the Complainant had no knowledge of Chinese and would therefore have to incur costly translation services. The Panel found that it was fair to accept the Complaint in English and the Response in Chinese. In reaching this conclusion, the Panel considered that the Respondent had not objected to the Complainant’s request, that he had also corresponded with the Complainant in both English and Chinese, that the merits of the case were strongly in favour of the Complainant, and that requiring the Complainant to translate the Complaint into Chinese would cause unnecessary delay.
Moving on to the substantive requirements under the UDRP, the Panel found that the Domain Names <louisxiii.vip>, <remy-martin.vip> and <remy-martin.top>, incorporated the Complainant’s trade marks in their entirety except for the hyphen and the .TOP and .VIP gTLDs, which are generally disregarded for the purpose of assessing identity or confusing similarity. As for the Domain Names <remymartin1724.top>, <remymartin1724.vip>, <remymartin1724.com>, <louisxiii1874.top>, <louisxiii1874.vip>, <louisxiiicognac.top> and <louisxiiicognac.vip>, the Panel found that they were confusingly similar to the Complainant’s trade mark as they incorporated the Complainant’s trade mark with the addition of numerals or the generic term “cognac”, which were strongly related to the Complainant.
The Panel therefore found that the Domain Names were identical or confusingly similar to the Complainant’s trade marks.
Turning to the second requirement under the UDRP, and whether the Respondent had rights or legitimate interests in the Domain Names, the Panel found that the Complainant had made out a prima facie case that the Respondent had no rights or legitimate interests as the Complainant’s trade marks were internationally renowned and the Respondent was not related to the Complainant in any way, whether as a licensor or distributor. The Respondent claimed, in turn, that he had registered the Domain Names, and in particular, <louisxiii.vip> (which at the time of writing of the decision was resolving to a website about King Louis XIII of France), with the idea of establishing “an online museum of exclusive network for public enterprises”. The Respondent also expressed his wish to become the Complainant’s “strategic partner in e-commerce” and stated that his goal was to become the largest e-commerce networking platform in China, similar to Taobao. However, the Panel found that in the circumstances of this case, the Respondent’s use of the Domain Name <louisxii.vip> to resolve to a website about King Louis XIII of France did not give rise to rights or legitimate interests in this Domain Name given that, first, the Respondent had registered other Domain Names that were clearly targeting the Complainant and its trade marks and, second, such use of the Domain Name only took place after the Respondent was put on notice of the Complaint.
The Panel therefore found that the Respondent did not have any rights or legitimate interests in the Domain Names.
Turning to bad faith registration and use, the Panel found that the Respondent had knowledge of the Complainant’s trade mark rights at the time of registration of the Domain Names, particularly as they were comprised of the Complainant’s trade mark in conjunction with descriptive terms, such as cognac, or numerals, that were strongly related to the Complainant’s activity. The Panel further found that the fact that the Domain Names were not resolving did not prevent a finding of bad faith, given the overall circumstances of the case. The Panel also determined that the Respondent was using the Domain Names to disrupt the Complainant’s business and/or take advantage of its rights and that his use of the Domain Name <louisxiii.vip>, as described above, was purely “pretextual”.
The Panel therefore found that the Domain Names were both registered and used in bad faith.
The Complainant satisfied all three requirements under the UDRP and so the Panel ordered the transfer of the Domain Names to the Complainant.
This decision is a typical cybersquatting case that underlines how the passive holding of a domain name does not necessarily prevent a complainant from succeeding under the UDRP when there are other elements that are strongly indicative of the respondent’s bad faith, such as the strength of the complainant’s trade mark and whether the respondent has demonstrated a pattern of abusive registrations, amongst other factors. The decision also highlights how each case turns on its own facts. Whilst one of the Domain Names consisted of a term that could be said to be generic and thus could have been legitimately used by a party other than the Complainant, the fact that the Respondent had registered other Domain Names clearly targeting the Complainant’s trade mark as they contained terms or numerals strongly related to the Complainant was enough to convince the Panel that the Respondent had registered all the Domain Names in bad faith. The decision is available here.