WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Renault SAS v. Alberto de Andrade Torres Filho

Case No. D2021-3526

1. The Parties

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

The Respondent is Alberto de Andrade Torres Filho, Brazil.

2. The Domain Name and Registrar

The disputed domain name <renaultrci.com> (the “Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (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 Domain Name. On October 23, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

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 November 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 25, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 6, 2022.

The Center appointed Ellen B Shankman as the sole panelist in this matter on January 12, 2022. 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 RENAULT and RCI BANK brands and trademarks are owned by Renault SAS (the “Complainant”) and its wholly owned subsidiary RCI Banque S.A, respectively. Through its subsidiary, the Complainant is the owner of trademark registrations across various jurisdictions.

The Complainant claims that it has spent a considerable amount of time and money protecting its intellectual property rights. The Complainant claims first use in commerce of its trademark RENAULT at least as early as 1899 which is well before the Respondent’s registration of the Domain Name, and provided evidence of multiple trademark registrations for the RENAULT and RCI BANK marks, including, inter alia: Brazil Registration No. 816717338 for RENAULT and design, registered on February 1, 1994 in classes 35, 37 and 40, International Registration No. 224502 for RENAULT, registered on October 9, 1959 in classes 7, 8 and 12, and European Union Trade Mark Registration No. 014180772 for RCI BANK, registered on October 2, 2015 in class 36.

The Complainant is the owner of various domain names across numerous Top-Level Domains (“TLDs”) 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 – which predates the registration of the Domain Name by decades.

The Complainant also provided evidence of a cease & desist letter (“C&D letter”) it sent the Respondent, to which the Complainant claims it received no response.

The Domain Name was registered on July 2, 2021, and according to the evidence provided by the Complainant, it did not resolve to any active page at the time of filing of the Complaint. The Panel also conducted an independent search to determine that the Domain Name resolves to an inactive page.

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. Thus, the Complainant’s company name and its trademark, both comprised of RENUALT, are renowned worldwide. RCI Banque S.A., trading as RCI Bank and Services and formerly known as Renault Crédit International, is a France-based international company specializing in automotive financing, insurance and related services for the Renault group brands globally; for the Nissan group brands in Europe, the Russian Federation, Asia and South America and for Mitsubishi Motors in the Netherlands. RCI Banque S.A. is a wholly owned subsidiary of the Complainant.

By virtue of its trademark and service mark registrations, the Complainant is the owner of RENAULT trademarks. The Domain Name which captures and combines the Complainant’s RENAULT trademark together with the dominant portion of the Complainant’s RCI BANK trademark, must be considered 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. Further, the Respondent is not commonly known by the Domain Name, all of which evidence a lack of rights or legitimate interests. The Respondent is using the Domain Name to direct Internet users to a website that resolves to a blank page and lacks content. The Respondent has failed to make use of this Domain Name and has not demonstrated any attempt to make legitimate use of the Domain Name, which evinces a lack of rights or legitimate interests in the Domain Name.

By registering the Domain Name that incorporates the Complainant’s RENAULT trademark in its entirety, the Respondent has created a domain name that is confusingly similar to the Complainant’s trademark, as well as its primary domain <renault.com>. The Domain Name also includes a clear reference to the Complainant’s financial subsidiary, RCI Banque S.A and resembles its domain name <rcibank.com>, with the addition of letters “rci” at the end of the Complainant’s RENAULT trademark. As such, the Respondent has demonstrated a knowledge of and familiarity with the Complainant’s brands and business.

The Domain Name can only be taken as intending to cause confusion among Internet users as to the source of the Domain Name, and thus, the Domain Name must be considered as having been registered and used in bad faith, with no good faith use possible. More specifically, where the Domain Name fully incorporates the Complainant’s RENAULT trademark together with the dominant portion of its RCI BANK trademark, there is no plausible good-faith reason or logic for the Respondent to have registered the Domain Name.

The Complainant claims that the Respondent has ignored the Complainant’s attempts to resolve this dispute outside of this administrative proceeding, and argues that failure to respond to a C&D letter may properly be considered a factor in finding bad faith registration and use of a domain name.

To summarize the Complaint, the Complainant is the owner of registrations for the trademarks RENAULT and RCI BANK, in respect of financial and other services. The Domain Name is confusingly similar to the trademarks owned by the Complainant. By registering the Domain Name that incorporates the combined trademarks and the addition of the “.com” TLD, the Respondent has created a domain name that is confusingly similar to the Complainant’s trademarks, and shows that the Respondent was familiar with the Complainant’s marks and goods and services. The slight changes do not prevent a finding of confusing similarity. Therefore, the Domain Name could be considered virtually identical or confusingly similar to the Complainant’s trademarks. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Domain Name was registered and is being used in bad faith. Thus, the Respondent’s registration and use of the Domain Name constitutes bad faith registration and use under the Policy, and the Complainant requests transfer of the Domain Name.

B. Respondent

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

6. Discussion and Findings

The burden for the Complainant under paragraph 4(a) of the Policy is to prove:

(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and used in bad faith.

The Complainant must prove in this administrative proceeding that each of the aforementioned three elements is present in order to obtain the transfer of the Domain Name.

In accordance with paragraph 14(a) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint. Since the Respondent did not respond to this Complaint, the supported facts regarding the use and reputation of the Complainant’s mark taken from the Complaint are generally accepted as true in the circumstances of this case.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has satisfactorily proven that it has registered trademark rights for RENAULT and RCI BANK.

Further, the Panel finds that the Domain Name integrates the Complainant’s marks and that the Domain Name is confusingly similar to the Complainant’s trademarks. The Panel finds that changes to the RCI BANK mark do not change the overall impression that the RENAULT and RCI BANK trademarks of the Complainant are recognizable, and it does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s trademarks. See Pfizer Inc. v. Asia Ventures, Inc., WIPO Case No. D2005-0256. See also Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110, stating “The incorporation of a Complainant’s well-known trademark in the registered Domain Name is considered sufficient to find the Domain Name confusingly similar to the Complainant’s trademark”.

Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Name is identical or confusingly similar to the Complainant’s registered trademarks, under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often-impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with relevant evidence of rights or legitimate interests in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name and that it is not related to or affiliated in any way with the Complainant, nor has the Complainant authorized the Respondent to use its trademarks. The Respondent is not commonly known by the Domain Name, does not have permission to use the Complainant’s marks, and is not using the Domain Name for a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Domain Name. In fact, the Domain Name resolves to an inactive page.

Based on the available record, the Panel finds that the Complainant has established a prima facie case, which was not refuted, and that the Respondent lacks rights or legitimate interests in the Domain Name.

Therefore, the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Name, under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel is convinced that the Respondent knew about the Complainant in choosing the Domain Name. The Panel is persuaded that the Respondent has demonstrated a knowledge of and familiarity with the Complainant’s brands. In light of and on balance of the facts set forth within this Complaint, the Panel finds that it is more likely than not that the Respondent knew of and targeted the Complainant’s trademarks, and that it is “not possible to conceive of a plausible situation in which the Respondent would have been unaware of” the Complainant’s brands at the time the Domain Name was registered. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The Panel agrees with the Complainant’s contention that indeed, the Respondent’s purpose in registering the Domain Name was probably to capitalize on the reputation of the Complainant’s trademarks.

WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.1.4 states “Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith”.

The Panel’s view is that, when considering the balance of probabilities, it is more likely than not that the Respondent not only had actual knowledge of the Complainant’s trademarks and that registration of the Domain Name would be confusingly similar to the Complainant’s trademarks, but that the use was intended to ride on the reputation of the Complainant.

The Panel also finds that even though the Domain Name currently resolves to an inactive page, this does not preclude a finding of registration and use in bad faith where: “ […] it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate” (See Telstra Corporation Limited v. Nuclear Marshmallows, supra). This is also consistent with section 3.3 of the WIPO Overview 3.0, which states:

“From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding.

While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.”

In addition, the Panel is persuaded that the Respondent has ignored the Complainant’s attempts to resolve this dispute outside of this administrative proceeding. Failure to respond to a C&D letter may properly be considered a factor in finding bad faith registration and use of a domain name. See Encyclopedia Britannica v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party, WIPO Case No. D2000-0330 (failure to positively respond to a demand letter provides “strong support for a determination of ‘bad faith’ registration and use”). See also RRI Financial, Inc., v. Ray Chen, WIPO Case No. D2001-1242 (finding bad faith where “The Complainant alleges that it sent numerous cease and desist letters to [r]espondent without receiving a response”).

Given the evidence of the Complainant’s prior rights in their widely-known trademarks, the timing of the registration of the Domain Name with apparent full knowledge of the Complainant, and the absence of the use of the Domain Name for a legitimate purpose, the Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Name in bad faith, under 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 Domain Name <renaultrci.com> be transferred to the Complainant.

Ellen B Shankman
Sole Panelist
Date: January 26, 2022