Cognac Producer Successfully Obtains Domains Reproducing its Brand Under new gTLDs

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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).

Cognac WIPO

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.

cognac

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.

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.

The Complainant satisfied all three requirements under the UDRP and so the Panel ordered the transfer of the Domain Names to the Complainant.

The decision is available here

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