WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Renault SAS v. Registration Private, Domains By Proxy, LLC / Name Redacted1
Case No. D2020-2555
1. The Parties
The Complainant is Renault SAS, France, represented by Dreyfus & associés, France.
The Respondent is Registration Private, Domains By Proxy, LLC, United States of America (“United States”) / Name Redacted, United States.
2. The Domain Name and Registrar
The disputed domain name <renauilt.com> is registered with Wild West Domains, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 2, 2020. On October 2, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 2, 2020, 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 6, 2020, 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 6, 2020.
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 October 8, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 28, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 29, 2020. On October 15, 2020, an individual submitted an email to the Center, indicating that it had not registered the disputed domain name but had been victim of an identity theft.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on November 6, 2020. 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, Renault SAS, a French corporation, has been manufacturing cars since 1898. It submits that it is the leading French brand worldwide and leads the European electric vehicle market. It has a presence in 134 countries and in 2019 sold approximately 3.8 million vehicles.
To meet the major technological challenges of the future, while continuing to pursue its profitable growth strategy, it is focusing on international expansion and drawing on the synergies of its five brands; Renault, Dacia, Renault Samsung Motors, Alpine and Lada.
Its business is divided into two operational sectors in over 134 countries; (1) Automotive, including the design, production and distribution of products through a sales network (including the Renault Retail Group subsidiary) and (2) services, including sales financing, rental, maintenance and service contracts.
The Complainant exhibits at Annex 3 a comprehensive guide to the company which confirms and illustrates the above information.
The Complainant and its trade mark RENAULT, as a result of its activities worldwide and long use, have acquired a worldwide reputation and goodwill in the mark RENAULT. It owns numerous trade mark registrations for RENAULT around the world.
In particular the Complainant relies upon four EU trade mark registrations for RENAULT all of which predate the date of registration of the disputed domain name on September 16, 2020. These are;
i. 013647061 registered on May 13, 2015 in class 4;
ii. 010684462 registered on August 9, 2012 in classes 9, 14, 24, 28 and 34.
iii. 009732744 registered on August 22, 2011 in classes 35,36,37,38,39,40,41 and 42.
iv. 011658374 registered on August 8, 2013 in class 12.
Copies of the certificates of registration are exhibited in Annex 4.
In addition the Complainant operates using, inter alia, the domain name <renault.com> to promote its goods and services.
As documented in Annex 1 to the Complaint, the disputed domain name resolves to an inactive page. There is no evidence that the Respondent has made any demonstrable preparations to use the domain name.
In the absence of a Response the Panel finds the evidence adduced by the Complainant and set out above to be true and determines the Complaint on that basis.
5. Parties’ Contentions
The Complainant submits;
i. The disputed domain name is confusingly similar to the mark RENAULT in which it has registered rights;
ii. In the absence of a Response and on the evidence the Respondent has no rights or legitimate interest in respect of the disputed domain name.
iii. On the evidence and in the absence of a Response the disputed domain name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions. On October 15, 2020, an individual submitted an email to the Center, indicating that it had not registered the disputed domain name but had been victim of an identity theft.
6. Discussion and Findings
A. Identical or Confusingly Similar
As set out in section 4 above, the Complainant has established that it has registered rights in the trade mark RENAULT. It also submits that in a number of previous panel decisions referred to in the Complaint the mark RENAULT has been held to be “well-known”. Having considered the evidence of the Complainant’s trading using the mark this Panel also finds RENAULT to be a “well-known” trade mark.
It submits that on the basis of previous panel decisions, which it also refers to, that the incorporation of a “well-known” mark in its entirety may be sufficient to establish that the domain name is identical or confusingly similar to a complainant’s mark.
In this case the disputed domain name <renauilt.com> does not, in the Panel’s view, incorporate the mark RENAULT in its entirety but, as put by the Complainant, “imitates” the mark with the addition of the letter “i” between the letters “u” and “l”. The Panel agrees with the Complainant that the insertion of the letter “i” into the mark RENAULT does not prevent the confusin similarity.
The Complainant cites the earlier UDRP decision in General Motors LLC v Carol Schadt, WIPO Case No. D2012-2106 as support for the proposition that “a minor variation, such as adding a short letter is usually insufficient in and of itself, when used in forming a domain name that results from modifying the mark, to confer requisite and sufficient distinctiveness to that name to avoid user confusion”. This Panel agrees with that reasoning.
It is well-established (see Section 1.11 of the WIPO Overview 3.0) that the addition of a Top-Level-Domain (“TLD”) such, as in this case “.com”, is not to be taken into consideration when considering the identity or similarity of the disputed domain name with the trade mark relied upon.
The Panel finds that the disputed domain name is confusingly similar to the mark RENAULT in which the Complainant has rights within paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant submits that there is no evidence that the Respondent is either affiliated with the Complainant in any way or has been authorized by it to use or register its trade mark or to seek registration of any domain name incorporating the mark. Further given the dates of registration of the marks RENAULT relied upon and the fact that it has traded as Renault since 1898 means that the Respondent cannot claim prior rights or legitimate interest in the domain name.
There is, moreover, no evidence that the Respondent has traded using RENAULT or is commonly known by the mark within paragraph 4(c)(ii) of the Policy.
Similarly there is no evidence that prior to the Complaint the Respondent was using, or had made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services within paragraph 4(c)(i) of the Policy. The evidence as shown by Annex 1 to the Complaint is that the disputed domain name resolves to an inactive page.
The Complainant also submits that the confusing similarity between the mark RENAULT and the disputed domain name is sufficiently close so that the Respondent cannot reasonably pretend it was intending to develop a legitimate activity using the disputed domain name.
Having established that the mark RENAULT is “well-known” and that it has acquired a worldwide reputation and goodwill in the mark, the Complainant submits that it is not possible to conceive a “plausible circumstance” in which the Respondent could legitimately use the disputed domain name as it would inevitably cause confusion as to and misrepresent the Complainant’s rights.
In the absence of a Response and evidence to the contrary the Panel accepts the Complainant’s submissions and finds that it has established that the Respondent has no rights or legitimate interests
In the disputed domain name within paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant relies upon established authority to support the proposition that where the Respondent “knew or should have known” of the Complainant’s trade mark rights but nevertheless proceeded to register the disputed domain name that this is evidence of registration in bad faith. The Panel agrees with that proposition.
On the evidence it is established that the mark RENAULT is “well-known”. Previous UDRP panels have found that the Complainant has a worldwide reputation and registrations for the mark RENAULT. This Panel, too, finds that to be the position and agrees that it was “unlikely” that the Respondent was unaware of the Complainant’s rights at the date of registration.
This is supported by the finding of confusing similarity between RENAULT and the disputed domain name. The difference is small with the addition of the letter “i”.
In summary, given the similarity of the disputed domain name to the mark RENAULT, its registration (and subsequent use) by the Respondent is evidence of “opportunistic bad faith”. See, for example, LANCOME PARFUMS ET BEAUTE & CIE, L’OREAL v. 10 Selling, WIPO Case No. D2008-0226, cited and relied upon by the Complainant.
As put by the Complainant, on the evidence, it is likely that the Respondent registered the disputed domain name based on the notoriety and attractiveness of the Complainant’s trade mark so as to divert Internet traffic to its website. It is therefore “inconceivable” that the Respondent did not have the Complainant’s trade mark in mind at the date of registration. In the absence of evidence to the contrary the Panel accepts that submission and finds that the disputed domain name was registered in bad faith.
It is well-established that passive holding, as in this case, can constitute bad-faith use depending upon all the circumstances of the Respondent’s conduct. The Complainant relies upon Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, which sets out some of the factors which can show use in bad faith including;
i. The complainant’s trade mark had a strong reputation and was widely known;
ii. The respondent had provided no evidence of any actual or contemplated good faith use by it of the domain name;
iii. The respondent had taken active steps to conceal its true identity, by operating under a name that is not a registered business name; and
iv. The respondent had actively provided, and failed to correct, false contact details, in breach of its registration agreement.
On the evidence points (i) and (ii) are satisfied. The mark RENAULT has a strong reputation and is widely known. There is no evidence of good faith use by the Respondent.
The Complainant also adduces evidence of phishing attempts by the Respondent. As set out in Annex 6, there is evidence that the disputed domain name was used for phishing attempts. Emails were sent from “firstname.lastname@example.org” targeting selected people working at Renault, including an account manager and finance manager at Renault in South Africa. The Complainant regarded this as “extremely dangerous” and a “high risk” which could harm its consumers or employees and allow the Respondent to obtain confidential or financial information. In the Panel’s view this is evidence of bad faith use.
Furthermore, as the Complainant contends, the act of “typosquatting” or registering a domain name that is a common misspelling of a mark in which a party has rights has often been recognized as evidence of bad faith registration per se (see section 3.2.1. of the WIPO Overview 3.0).
Finally, the Respondent appears to have used the name of a third party when registering the disputed domain name. Indeed, a third party to the dispute indicated, during the proceedings, that it was victim of an identity theft such behavior constitutes evidence of bad faith (see section 3.4 of the WIPO Overview 3.0).
On the evidence and in the absence of a Response the Panel finds that the disputed domain name was registered and used in bad faith in accordance with paragraph 4(a)(iii) of the Policy.
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, <renauilt.com> be transferred to the Complainant.
Clive Duncan Thorne
Date: November 13, 2020
1 Respondent appears to have used the name of a third party when registering the disputed domain name. In light of the potential identity theft, the Panel has redacted Respondent’s name from this decision. However, the Panel has attached as Annex 1 to this decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST‑12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.