WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Renegade LLC v. Kenneth Gibert
Case No. D2008-0646
1. The Parties
The Complainant is Renegade LLC, New York, New York, United States of America, represented by Winston & Strawn LLP, United States of America.
The Respondent is Kenneth Gibert, St. Louis, Missouri, United States of America.
2. The Domain Names and Registrar
The disputed domain names and are registered with Melbourne IT, trading as Internet Names Worldwide (“Melbourne IT”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 24, 2008. On April 25, 2008, the Center transmitted by email to Melbourne IT a request for registrar verification in connection with the domain names at issue. On April 28, 2008, Melbourne IT transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of both domain names 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”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 5, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 25, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 26, 2008.
The Center appointed Sally M. Abel as the sole panelist in this matter on May 30, 2008. 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, Renegade LLC, is a non-traditional marketing agency affiliated with Dentsu USA, the United States subsidiary of Dentsu Inc., the largest advertising agency in the world. The Complainant ranks among the top 100 “Promotion and Interactive” agencies and has received numerous marketing awards. The Complainant has used the mark and name RENEGADE MARKETING GROUP since October 1994 in connection with website development, advertising, marketing and public relations services. Additionally, the Complainant registered its domain name in April 1997 and its website has been in continuous operation since January 1998.
The Complainant owns U.S. federal trademark registrations as follows:
1. RENEGADE MARKETING GROUP, Reg. No. 2,449,570, issued May 8, 2001;
2. RENEGADE MARKETING GROUP & Design, Reg. No. 3,154,766, issued October 10, 2006;
3. RENEGADE MARKETING GROUP & Design, Reg. No. 3,172,045, issued November 14, 2006; and
4. RENEGADE, Reg. No. 3,251,851, issued June 12, 2007.
On January 26, 2005, the Respondent registered the domain names and (the “Domain Names”). When the Complaint was filed, the content posted on the “> site was titled “Renegade Marketing” and contained the following information:
Taking a different approach
Renegade Marketing arose out of an awareness that we live in “interesting” times: as professionals and businesses we need to take innovative and sustained actions to build competitiveness and profitability; as individuals we want to improve our lifestyles and add to our personal happiness.
We offer marketing consulting designed to create visible, substantial and measurable improvements in sales and customer relations at minimal cost. We do this by building on existing relationships in innovative, results-driven ways, and by inexpensively developing new customer relationships.
We also offer high-quality health and happiness enhancing products at a reasonable price.
We believe that if a business does not provide its customers with valuable services, it does not deserve to last, and we are dedicated to taking a different approach to meet your expectations for a long, long time.
The company described on the site is not affiliated with the Complainant. In 2005, the Respondent’s domain name also redirected to this same page.
The Complainant sent a letter to the Respondent on July 27, 2007 objecting to the Respondent’s use of the Domain Names. The Respondent did not respond to the Complainant’s letter. As recently as November 28, 2007, the Respondent’s continued to display the content above. At present, the Domain Names do not resolve to active websites.
5. Parties’ Contentions
A. Complainant
The Complainant alleges that the Domain Names are identical or confusingly similar to its RENEGADE and RENEGADE MARKETING family of marks, and identical to its own domain name . Specifically, the Domain Names consist of the mark RENEGADE MARKETING, which is identical or confusingly similar to the Complainant’s federally registered and incontestable mark RENEGADE MARKETING GROUP.
The Complainant alleges that the Respondent possesses no rights or legitimate interests in respect of the Domain Names, as the Complainant’s statutory and common law rights in the RENEGADE and RENEGADE MARKETING marks pre-date the registration date of the Domain Names. The Respondent is not related to, licensed by, or affiliated with the Complainant and the Complainant has never authorized or granted permission to the Respondent to use its mark RENEGADE MARKETING or to obtain Domain Names identical or confusingly similar to it. The Complainant further alleges that the Respondent registered the Domain Names with actual or constructive knowledge of the Complainant’s rights in the RENEGADE marks as a result of the Complainant’s United States trademark registrations, as well as its use of those marks in commerce. The Complainant alleges that via “long use, extensive advertising, favorable publicity and high-profile promotional activities” its RENEGADE-based marks have a national reputation.
The Complainant alleges that the Respondent’s registration and use of the Domain Names was in bad faith in that the Respondent acquired the Domain Names to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s marks. The Complainant also alleges that the Respondent acquired and used the Domain Names to advertise its business with actual knowledge of the Complainant’s marks, and that the odds that Respondent did not have knowledge of the Complainant’s prior well-known use of RENEGADE MARKETING mark and of the domain name when the Respondent chose the disputed domain names for use with services identical or similar to the Complainant’s are nonexistent. Additionally, the Respondent’s more recent act of hosting no accessible content at the Domain Names and failing to transfer or release the Domain Names also constitutes bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Rules provide: “If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based on the Complaint.” Rules, paragraph 5(e). See also Rules, paragraph 14. There is not response in this case; there are no exceptional circumstances presented. The Complaint establishes that the Complainant has met its burden of proof on each of the required elements.
A. Identical or Confusingly Similar
The Complainant unquestionably owns trademark rights in RENEGADE MARKETING GROUP. While neither of the Domain Names in question is identical to the mark, both are confusingly similar. The and Domain Names differ from the Complainant’s mark only in that the generic “group” has been eliminated, and the gTLD varied in each. These are distinctions without a difference. See Gateway Inc. v. James Cadieux, WIPO Case No. D2000-0198 (May 25, 2000). It is beyond question that the Domain Names are confusingly similar to the Complainant’s mark.
The Complainant has met its burden on this element of the Policy.
B. Rights or Legitimate Interests
There is nothing in the record to suggest that the Respondent has any rights or legitimate interests in the Domain Names. The Complainant has made out a prima facie case in this respect. The Respondent has not filed a Response.
The Complainant has met its burden on this element of the Policy.
C. Registered and Used in Bad Faith
The Panel finds the Respondent’s registration and use of the Domain Names in question are in bad faith pursuant to paragraph 4(b)(iv) of the Policy.
The Complainant argues that the Domain Names were registered and used in bad faith to divert Internet users to the Respondent’s website for commercial gain based on confusion with the Complainant’s mark. Again, the Respondent has not denied these allegations or provided any evidence to support a finding that it registered and used the Domain Names in good faith.
The mark RENEGADE MAKETING GROUP appears to have long and extensive use associated with the Complainant, and is the subject of long-standing federal registrations relating to advertising, and it is reasonable to infer, given the allegations of the Complainant and the Respondent’s silence, that the Respondent was aware of the Complainant’s mark when it registered and started use of the Domain Names. Based on the record presented, it further appears that the Domain Names were registered and used to divert users looking for the Complainant’s website. Therefore, in the absence of evidence to the contrary, the Panel concludes the Respondent’s registration of and in connection with a site promoting the Respondent’s advertising services constitutes bad faith registration and use in violation of the Policy. The current inaccessibility of those sites does not alter the conclusion that the Domain Names were registered and used in bad faith.
The Complainant has met its burden on this element of the Policy.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names and be transferred to the Complainant.
Sally M. Abel
Sole Panelist
Dates: June 13, 2008
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