WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Lojas Renner S.A. v. Whoisguard Protected, WhoisGuard, Inc. / Nowel Whitehouse
Case No. D2017-1128
1. The Parties
The Complainant is Lojas Renner S.A. of Porto Alegre, State of Rio Grande do Sul, Brazil, represented by Silveiro Advogados, Brazil.
The Respondent is Whoisguard Protected, WhoisGuard, Inc. of Panama, Panama / Nowel Whitehouse of Conway, Arkansas, United States of America (“United States”), self-represented.
2. The Domain Name and Registrar
The disputed domain name <renner.site> (the “Disputed Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 8, 2017. On June 9, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 9, 2017, 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 June 14, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant did not amend the Complaint.
The Center verified that the 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 June 29, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 19, 2017. The Respondent sent a communication to the Center on June 29, 2017. The Complainant sent a supplemental filing to the Center on June 30, 2017. This is discussed below. On July 13, 2017, the Respondent asked for an automatic 4-day extension of the deadline to file the Response which was granted pursuant to paragraph 5(b) of the Rules. The new due date for Response was July 23, 2017. The Response was filed with the Center on July 24, 2017.
The Center appointed Nick J. Gardner as the sole panelist in this matter on August 1, 2017. 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 Brazilian fashion retailer. It was founded in 1912 by A. J. Renner. It has been active in the retail market since 1965 and today operates more than 350 units in Brazil and abroad, and has more than 17,000 employees. The Complainant is the one of the largest fashion retailers in Brazil in terms of revenue and has been recognised as having one of the most valuable brands in the clothing sector in Brazil. The survey “The 25 Most Valuable Brazilian Brands”, conducted by the consultancy Interbrand valued the RENNER brand at approximately USD 355 million.
The Complainant owns or has rights via its affiliates in several registered trademarks for the word RENNER. The earliest of these is Brazilian registered trademark no. 002168871 filed on December 15, 1957.
The Complainant owns various domain names involving the word “renner”, including <renner.com, <renner.com.br>, <renner.boutique>, <renner.business>, <renner.career>, <renner.clothing>, <renner.fashion>, renner.international>, renner.market> and <renner.style>.
The Disputed Domain Name was registered on July 1, 2016. It resolves to a website which contains click−through links to third−party websites.
On June 29 2017 the Center received an email from the Respondent the Complaint which, stated “Your [sic] welcome to purchase this domain for $74,450.00 USD”.
5. Parties’ Contentions
The Complainant’s case is in summary as follows.
a) The Disputed Domain Name is identical to the RENNER trademark as the Top-Level Domain (“TLD”) “.site” is to be ignored in making this comparison
b) The Respondent does not have any rights or legitimate interests in the Disputed Domain Name.
c) The Respondent uses the Disputed Domain Name in bad faith as the website to which the Disputed Domain Name resolves, make use of the Complainant’s RENNER trademark in order to raise advertising revenue through the use of sponsored or click-through links.
d) The Complainant goes on to makes a number of detailed comments about the Respondent and his portfolio of domain names. These are addressed in the discussion below.
e) The Complainant also says (in its Supplemental filing – see below) that the offer made by the Respondent to sell the Disputed Domain Name for USD 74,450.00 is further evidence of bad faith.
The Respondent’s case is as follows.
Other parties own domain names involving the word “renner” which are for sale, including for example <renner.org>, <renner.met>, <renner.xyz> and <renner.property>. The Respondent himself also owns <renner.space>.
Various other available domain names which include “renner” are not registered at all, including for example <renner.fun>, <renner.link>, <renner.shop>, <renner-life> and <renner.blog>. The Respondent says it is unfair that registrars can profit from offering these domain names for sale but he cannot use <renner.site>.
The Respondent’s main case is stated in the following terms “I had no idea that ‘Renner’ even existed as a large retailer in Brazil. Honestly, the only time I had heard the name ‘Renner’ was in conversations with friends about the name of a Middle School in Plano, Texas. My thoughts in buying the domain were to one day possibly create a webpage for various departments or clubs representing Renner Middle School, or to see if they would be interested in purchasing the domain extension from me. Because of my interest, a large majority of my domain portfolio is filled with domain names that include education institutes or various platforms. More and more schools, at all levels, are going paperless and increasing their presence online. I look forward to continuing to add to my education domain portfolio and helping educational institutes design and implement new digital tools.”
He also says that the allegation of bad faith goes against his character and business ethics and that he earns no money from the parking page to which the Disputed Domain Name resolves.
He says the fact that he owns many other domain names is irrelevant and many of these were purchased at special promotional prices and have now expired.
The Respondent goes on to say “While I feel like I could change my online design to benefit from the ownership of renner.site, I can see the possible benefits of the ‘Renner’ brand also using the domain name to add to the extensions they currently own that reach their online customer base. I am ready and willing to negotiate a fair asking price for the sale of renner.site”.
6. Discussion and Findings
The Panel will in its discretion admit the Supplemental Filing filed by the Complainant on June 30, 2017. It deals with a matter that had not occurred at the time the Complaint was filed, namely the Respondent’s communication with the Center offering to sell the Disputed Domain Name. The Respondent has not disputed that correspondence in its subsequent Response of July 21, 2017, and it is directly relevant to issues the Panel has to decide. The Supplemental Filing also adds Nowel Whitehouse as a named Respondent (see below).
Paragraph 4(a) of the Policy states that the Complainant must prove each of the three following elements:
(i) the Disputed Domain Name is identical to or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in the Disputed Domain Name;
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has submitted detailed evidence that it is the owner of or has rights in the RENNER trademark.
The Panel holds that the Disputed Domain Name is identical to the above trademark.
It is well established that the TLD, in this case “site”, does not generally affect the domain name for the purpose of determining whether it is identical or confusingly similar – see for example Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Accordingly the Panel finds that the Disputed Domain Name is identical to the Complainant’s RENNER trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy non-exhaustively lists three circumstances that demonstrate rights or legitimate interests in a domain name:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business or other organisation) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
None of these clearly apply in the present circumstances. For reasons discussed below in relation to bad faith the Panel does not accept the Respondent’s claim that he registered the Disputed Domain Name in connection with the creation of a portfolio of domain names relating to educational establishments.
Accordingly the Panel finds that the Respondent has failed to establish any rights or legitimate interests in the Disputed Domain Name and hence the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
It seems to the Panel that this issue turns upon the Respondent’s claim never to have heard of the Complainant when he registered the Disputed Domain Name. In assessing this issue the Panel notes that although the Complainant’s evidence is of a substantial business that evidence only establishes that business as taking place in Latin America and the Respondent is based in the United States. The Panel also notes that the word “renner” does not, so far as the Panel is aware, have any meaning in the English language – certainly there is no evidence before the Panel of any such meaning (either in English or any other language). It may correspond to a surname (given that is where the Complainant’s name originally derived from) but the Respondent does not suggest he registered it for this reason. It is not uncommon for third parties to register short (three or four letter) domain names that have no obvious meaning in the belief they may intrinsically be of value to someone in the future. This is not such a case. It is also common for parties to register domain names which are not dictionary words but which have some aural or phonetic correspondence with a dictionary word. Again this is not such a case.
What then was the Respondent’s reason for registering the Disputed Domain Name? The Respondent’s case is that he chose the Disputed Domain Name because it might be of interest to Renner Middle School in Plano, Texas, United States. The Panel regards this explanation, without any corroborating evidence, as lacking credibility. The Panel is conscious that proceedings under the UDRP are of a limited and restricted nature, do not involve oral hearings, discovery or cross examination, and hence are only applicable to clear cut cases, and it is not usually appropriate to decide disputed questions of fact or matters of truth or falsehood. That does not however mean the Panel cannot reach a conclusion as to the veracity of a case that is being advanced where the only evidence is inherently not credible, and which is not supported by relevant corroborative or third-party evidence. The Panel considers this to be such a case for the following reasons. The Respondent does not live in Texas and he has not produced any evidence of any connection between him and this middle grade school in Texas. He has not produced any evidence of a systematic project to register any other school names which would tend to corroborate his explanation. He has not produced any evidence of any communication with the school in question. The Respondent refers to “my education domain portfolio” and “helping educational institutes design and implement new digital tools” but has not provided any corroborating evidence showing this portfolio exists or this activity has taken place. On balance the Panel considers it far more likely that the Respondent’s explanation is an “after the fact” explanation, which has been contrived to provide a justification when none existed. In this regard although the Complainant’s business is, on the evidence, confined to Latin America it seems to the Panel likely that even cursory searches carried out by the Respondent would have identified the Complainant and its business at the time he registered the Disputed Domain Name. This is particularly so given there is no evidence of anyone else at all using the word “renner” as a business name anywhere in the world. The Panel considers the fact that various other third parties have also registered domain names containing the word “renner” to be wholly irrelevant given that there is no evidence any of these parties trade under the name “renner”.
The Panel would have reached this conclusion on the available facts in any event but the Respondent’s conduct in the face of the Complaint, offering to sell the Disputed Domain Name to the Complainant for USD 74,500, reinforces the Panel’s conclusion – it seems to the Panel to fall within paragraph 4b(i) of the Policy as being “circumstances indicating that you have registered or you have acquired the 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 your documented out-of-pocket costs directly related to the domain name”
The website currently linked to the Disputed Domain Name comprises a series of pay-per-click (“PPC”) links to other third-party websites. The Panel infers that some consumers, once at this website will follow the provided links and “click through” to other sites which offer products some of which may compete with those of the Complainant. The Panel infers the website is automatically generated and does not accept the Complainant’s arguments that these links show the Respondent deliberately targeting the Complainant and its business. This does not however matter. It is well established that where a domain name is used to generate revenue in respect of “click through” traffic, and that traffic has been attracted because of the name’s association with the complainant, such use amounts to use in bad faith. This is so even where the relevant links are automatically generated by algorithms used by the registrar. It does not matter that the revenue earned from this activity is retained by the Registrar and does not accrue directly to the Respondent. See for example Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315; Owens Corning v. NA, WIPO Case No. D2007-1143; McDonald’s Corporation v. ZusCom, WIPO Case No. D2007-1353; Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912; Rolex Watch U.S.A., Inc. v. Vadim Krivitsky, WIPO Case No. D2008-0396.
The Panel does not consider it as relevant that other third parties have also registered domain names comprising the word “renner” with a different TLD. There may be cases where a particular word has been widely used in trade and become generic but this is not such a case – there is no evidence of any of these other domain names as being used for a bona fide trade and the Panel considers them to be irrelevant. The Panel also considers it irrelevant that other registrars may be offering for sale other “renner” domain names – the fact that such domain names are offered does not necessarily mean they can be purchased and used without violating the Policy and their existence does not affect the Panel’s consideration of the present case.
It is also irrelevant that the Respondent owns <renner.space> as there is no evidence the Complainant was aware of this or has in any way consented to it. Indeed if anything this fact throws further doubt upon the Respondent’s explanation – it is very difficult indeed to see why he would need to register two domain names for use by the Renner Middle School.
The Panel does not however accept the various further contentions made by the Complainant as to the remainder of the Respondent’s domain name portfolio. There is nothing inherently wrong with having a large portfolio of domain names or in trading in domain names and the Panel does not find that there is clear evidence here of any other domain names in the Respondent’s portfolio being objectionable.
Taking all of the above into account the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
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, <renner.site>, be transferred to the Complainant.
Nick J. Gardner
Date: August 8, 2017