WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Renault SAS v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / ITALO BARBOSA

Case No. D2021-3528

1. The Parties

The Complainant is Renault SAS, France, represented by CSC Digital Brand Services Group AB, Sweden.

The Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / ITALO BARBOSA, Brazil.

2. The Domain Name and Registrar

The disputed domain name <rcirenault.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 22, 2021. On October 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 22, 2021, 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 October 25, 2021, 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 October 29, 2021.

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 November 4, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 24, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 25, 2021.

The Center appointed Peter Burgstaller as the sole panelist in this matter on December 15, 2021. 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 major automobile manufacturer headquartered in Boulogne-Billancourt (Annex 6 to the Complaint). It holds numerous trademark registrations for RENAULT around the world, registered from 1926 onwards, e.g.

- United Kingdom Trademark registration RENAULT No. 471164, registered on July 5, 1926;
- France Trademark registration RENAULT No. 459352, registered on October 13, 1949;
- United States of America Trademark registration RENAULT No. 3072692, registered on March 28, 2006;
- Brasil Trademark registration RENAULT No. 816717338, registered on February 1, 1994;
- European Union Trademark registration RENAULT No. 9732744, registered on August 22, 2011;
- International Trademark registrations RENAULT No. 224502, registered on October 9, 1959 designated for various countries around the world (Annex 1 to the Complaint).

In addition, the Complainant owns several domain names containing the mark RENAULT, inter alia, the domain name <renault.com> for addressing its main websites (Annex 4 to the Complaint).

The disputed domain name was registered on March 9, 2021 (Annex 2 to the Complaint).

The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register a domain name incorporating its RENAULT trademarks.

The disputed domain name directed Internet users to a website displaying the Complainant’s RENAULT logo along with a stylized car and information in Portuguese language (Annex 3 to the Complaint). At the time of the decision, the disputed domain name resolves to an inactive website.

5. Parties’ Contentions

A. Complainant

The Complainant is a French multinational automobile manufacturer headquartered in Boulogne-Billancourt. Founded in 1899, the Complainant has become a globally known and leading brand in the automobile industry with over 170,158 employees and presence in 39 countries. The activities of the Complainant’s group have been organized into three main types of operating activities including; design, manufacture and distribution of automotive products, sales financing, and mobility services. The Complainant’s group owns five complementary brands including RENAULT, which sold 2,951,971 vehicles worldwide and reported revenues in excess of EUR 43 billion in 2020 alone. The Complainant continues to grow with its innovative strategies to meet the major technological challenges, through which it reached a record sales performance in 2020 with its best-selling electric model.

The Complainant owns various registered trademarks for RENAULT as well as through its wholly owned subsidiary RCI Banque S.A for RCI BANK, respectively.

The Complainant moreover has a strong Internet presence through its websites; it is the owner of various domain names across numerous Top-Level Domains containing its RENAULT and RCI BANK trademarks and variations thereof, including <renault-rci.com>, <rcibank.com>, <renault.com.br>, and its primary domain name <renault.com>, which was registered in 1994.

The Complainant’s company name and its trademarks, both comprised of RENAULT, are renowned worldwide.

The disputed domain name registered by the Respondent captures and combines the Complainant’s RENAULT trademark together with the dominant portion of the Complainant’s RCI BANK trademark; the disputed domain name must be therefore considered as confusingly similar to each of these trademarks.

The Respondent is not sponsored by or affiliated with the Complainant in any way nor has the Complainant given the Respondent permission to use the Complainant’s trademarks in any manner, including in domain names.

The disputed domain name incorporates the famous trademark RENAULT and also includes a clear reference to the Complainant’s financial subsidiary, RCI. As such, the Respondent has demonstrated a knowledge of and familiarity with the Complainant’s brand and business when registering the disputed domain name. Hence, the disputed domain name was registered in bad faith by the Respondent.

The Respondent also used the disputed domain name by directing Internet users to a website displaying the Complainant’s RENAULT logo along with same textual and design components of the Complainant’s own website.

Although the disputed domain name currently resolves to an inactive site and is not being used actively, inaction is also within the concept or paragraph 4(a)(iii) of the Policy.

Moreover, the Respondent currently holds registrations for several other domain names that misappropriate the trademarks of well-known and competitor automobile brands in a similar composition which attracts attention to related financial services. This fact demonstrates that the Respondent is engaging in a pattern of cybersquatting/typosquatting, which is evidence of bad faith registration and use of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove that:

(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 with respect to 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 submitted evidence, which incontestably and conclusively establishes rights in the trademark RENAULT.

The disputed domain name is confusingly similar to the Complainant’s registered trademarks RENAULT since it entirely contains this trademark and only adds the prefix “rci” and the generic Top-Level Domain (gTLD) “.com”.

It has long been established under UDRP decisions that where the relevant trademark is recognizable within the disputed domain name, the mere addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) will not prevent a finding of confusing similarity under the first element of the Policy (see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

In the present case, disregarding the gTLD ".com", the disputed domain name is confusingly similar to the Complainant’s RENAULT trademark.

The Panel therefore finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element (see section 2.1 of the WIPO Overview 3.0). Here, the Complainant has put forward a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which has not been rebutted by the Respondent.

Furthermore, the nature of the disputed domain name, comprising the Complainant’s mark in its entirety, cannot be considered fair as it falsely suggests an affiliation with the Complainant that does not exist (see section 2.5 of the WIPO Overview 3.0). Similarly, the use of the disputed domain name to impersonate the Complainant, namely by mimicking the Complainant’s Portuguese website at the domain name <bancorenault.com.br>, cannot confer rights or legitimate interests upon the Respondent (see section 2.13 of the WIPO Overview 3.0).

Noting the above, and in the absence of any Response or allegations from the Respondent, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy

C. Registered and Used in Bad Faith

As stated in many decisions rendered under the Policy (e.g. Robert Ellenbogen v. Mike Pearson, WIPO Case No. D2000-0001) both conditions, registration and use in bad faith, must be demonstrated; consequently, the Complainant must show that:

- the disputed domain name was registered by the Respondent in bad faith, and
- the disputed domain name is being used by the Respondent in bad faith.

(i) The Complainant is the owner of the well-known and famous registered trademark RENAULT, and has registered and used the trademark in many jurisdictions around the world, long before the registration of the disputed domain name. Moreover, the Complainant registered and is using the domain name <renault.com> among others to address its websites.

It is inconceivable for this Panel that the Respondent registered or has used the disputed domain name without knowledge of the Complainant’s rights, which leads to the necessary inference of bad faith. This finding is supported by the fact that the disputed domain name incorporates the Complainant’s trademark and company name RENAULT entirely. Additionally, by using the term “rci” it rather strengthens the impression that the Respondent must have been familiar with the Complainant’s business since the term “rci” is used by the Complainant’s corporate group for automotive financing, insurance, and related services for the Renault group brands globally.

Therefore, the Panel is convinced that the disputed domain name was registered in bad faith by the Respondent.

(ii) The disputed domain name was also being actively used since it directed Internet users to a website displaying the Complainant’s RENAULT logo along with a stylized car and information in Portuguese language.

This active use of the disputed domain name by the Respondent clearly constitutes bad faith use since it takes unfair advantage of the reputation of the Complainant’s well-known trademark RENAULT, and in so doing to disrupt the Complainant’s business and to attract, for commercial gain, Internet users to another website, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement.

The current inactive status of the disputed domain name does not prevent a finding of bad faith under the circumstances of this proceeding, noting the well-known nature of the Complainant’s mark, the Respondent’s use of a privacy shield, and the Respondent’s failure to reply. See section 3.3 of the WIPO Overview 3.0.

On the basis of these facts and findings, it is for the Panel incontestable that the disputed domain name is registered and is being used in bad faith according to paragraph 4(a)(iii) of 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 <rcirenault.com> be transferred to the Complainant.

Peter Burgstaller
Sole Panelist
Date: December 29, 2021