E. REMY MARTIN & C° of Cognac, France, just lost a UDRP on the domain name TheRemyMartin.com to a “Remy Martin” of Palm Desert, California who appears to have represented himself.
The one member panel found that the domain holder did not register the domain in bad faith despite the fact that the domain was inactive and was being held to develop a blog of restaurant reviews.
Interestingly the case seemed to turn on the domain holder’s social networking accounts and used the domain holders Facebook, Twitter Linkedin and Instrgram accounts to proof he has established rights to TheRemyMartin by use.
The domain holders legal name is not Remy Martin.
The panel not only looked to see the name on each social networking account but noted the number of followers to each account.
Here are the relevant findings by the panel:
“The Respondent’s future blog on the review of restaurants is either to be a commercial venture or a noncommercial venture without intent for commercial gain. ”
“It cannot be both.
“If the Respondent’s blog on the Website is to be a commercial one say through advertising or referral fees from restaurants, then given the notoriety of the Complainant’s trade mark, it would be difficult to see how it could be a bona fide offering of services under the term “The Remy Martin”.
“This would of course also vitiate the claim of legitimate interests under paragraph 4(c)(iii) since the right or interest is no longer noncommercial or fair use of the Domain Name. It is not clear from the Response whether the intended use is to be an offer of services or to be a noncommercial blog to share with others the Respondent’s passion for food. It therefore follows that the Respondent has failed to prove her rights or legitimate interests under Policy, paragraph 4(c)(i) and (iii).
“With respect to Policy, paragraph 4(c)(ii), the Respondent submits that she is commonly known by the name “Remy Martin” or “The Remy Martin”. ”
“No evidence has been submitted to show that this is the Respondent’s legal name. ”
“It is not clear when she first became known by the name “Remy Martin” nor how she came to be known by the name. ”
“The evidence submitted shows that the Respondent has a Facebook account under the name “Remy Martin” which features the same photograph as that on the Website. She has 3119 friends on Facebook. There is also a Twitter account with the user name: “@TheRemyMartin”. She has 639 followers on Twitter. The display name of her Foursquare account is “Remy Martin”. She has 340 friends. Her Instagram name is “theremymartin” and she has 678 followers. ”
“No information has been given when all these various accounts were started and when the names “Remy Martin” or “The Remy Martin” were first used. In the email correspondence between the parties, the Respondent has signed off as “Remy Martin”.
“The actual language of the Policy provides that if a respondent has been commonly known by a domain name, even if it has acquired no trademark or service mark rights, this shall demonstrate its rights or legitimate interests in the domain name for purposes of the Policy.
“In the present case, the evidence presented by the Respondent reveals that the Respondent has been using the name “Remy Martin” or “The Remy Martin” on the Internet.”
“Although no evidence has been submitted to show that Remy Martin is the Respondent’s legal name, the Panel notes that Remy Martin is a proper name and there are a number of people named Remy Martin on the LinkedIn website. ”
“Furthermore, the Respondent is not a celebrity, and it would therefore be difficult for the Respondent to have set up all the various social media accounts and have those numbers of friends and followers just so as to to defeat this Complaint. ”
“The Panel did a quick reverse image search and found a dating website which featured a woman called “TheRemyMartin” with more photographs of the same person as the woman featured on the photograph on the Website. ”
“It contained information about “TheRemyMartin” which appears consistent with the information provided in evidence. ”
“In light of these circumstances, and based on the evidence presented by the Respondent, the Panel determines that the Complainant has failed to prove that the Respondent does not have rights or legitimate interests in the Domain Name for purposes of the Policy.
D. Registered and Used in Bad Faith
In light of the Panel’s conclusion in relation to the second element, there is no reason to consider the parties’ allegations concerning bad faith. However for completeness and even if the Panel had taken the view that the evidence submitted was not sufficient to satisfy paragraph 4(c)(ii), the Panel also finds that the third element has not been satisfied. To succeed under the Policy, a complainant must show that the domain name has been both registered and used in bad faith. It is a double requirement.
Doing this backwards, regarding use of the Domain Name, the Domain Name is currently inactive.
In the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 3.2 makes it clear that the lack of active use of a domain name without any active attempt to sell or to contact the trade mark holder does not prevent a finding of bad faith. All the circumstances of the case have to be considered. Examples of the cumulative circumstances found to be indicative of bad faith include the complainant having a well known mark, no response to the complaint having been filed and the registrant’s concealment of its identity. The leading case here is the Telstra case. Other than the fact the Complainant has a well known mark, the facts of this case do not fall within the factors that are usually found in the Telstra line of cases.
The Complainant has not provided any evidence that the Respondent in using the Domain Name has intentionally attempted to attract, for commercial gain, Internet users to the Website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of the Website or location or of a product of service on the Website.
The Panel therefore finds that there has been no use in bad faith.
With respect to registration in bad faith, the Complainant has not provided any evidence to show that:
(1) The Respondent has registered to Domain Name for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or a competitor for valuable consideration;
(2) The Respondent had engaged in a pattern of conduct to prevent the owner of a trade mark from reflecting the mark in a corresponding domain name;
(3) The Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor.