WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Renault S.A.S. v. Dhugal Clark Case No. D2009-1354 1. The Parties
The Complainant is Renault S.A.S., of France, represented by Dreyfus & associés of France.
The Respondent is Dhugal Clark, of United Kingdom of Great Britain and Northern Ireland (“United Kingdom”). 2. The Domain Names and Registrar
The disputed domain names , , , are registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 12, 2009. On October 13, 2009, the Center transmitted by email to GoD, Inc a request for registrar verification in connection with the disputed domain names. On October 13, 2009, GoD, Inc 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 22, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 11, 2009. The Response was filed with the Center on November 11, 2009.
The Center appointed Petter Rindforth as the sole panelist in this matter on November 18, 2009. 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.
Both the Complainant and the Respondent have filed one supplemental submission each, received by the Center on November 16, 2009 and November 23, 2009, respectively.
While the Parties can make supplemental filings, there is no express provision made for unsolicited supplemental filings in the Policy and Rules. Previous panels have held that unsolicited submissions should be considered only in exceptional circumstances, and only when the party filing the unsolicited submission explains the exceptional circumstances and why the material could not have been submitted with the Complaint or Response. See Gordon Sumner, p/k/a Sting v. Michael Urvan,WIPO Case No. D2000-0596; see also The E.W. Scripps Company v. Sinologic Industries,WIPO Case No. D2003-0447 (“[…] additional evidence or submissions should only be admitted in exceptional circumstances, such as where the party could not reasonably have known the existence or relevance of the further material when it made its primary submission; that if further material is admitted, it should be limited so as to minimise prejudice to the other party or the procedure; and that the reasons why the Panel is invited to consider the further material should, so far as practicable, be set out separately from the material itself.”)
In this case, the Panel finds no such exceptional circumstances. The additional submissions only repeat and extend the argumentation and comments already filed by the parties in the original Complaint and Response. As this Panel does not consider the supplemental filings to add to the case presented by the parties, the Panel decides not to consider them as the Complaint and Response alone are quite adequate for the Panel to decide this dispute.
The Administrative Panel shall issue its decision based on the Complaint, the Response, the Policy, the Rules and the Supplemental Rules. The case before the Panel was conducted in the English language. 4. Factual Background
The Complainant is a leading industrial firm designing and manufacturing cars, vans, buses, tractors and trucks and celebrated in 2008 its 110 years of existence. The Renault group is currently the world's 4th largest auto maker. The Complainant has commercial and industrial sites worldwide, and offers also a wide range of services such as financing, car rental, vehicles assistance and maintenance.
The Complainant is established in 118 countries, employs 129,000 people and manufactured 2.4 millions vehicles in 2008. Renault is active on all continents and notably in Europe.
The Complainant is present in the United Kingdom through its subsidiary Renault UK Ltd, whose business is marketing of Renault passenger cars and light commercial vehicles. The Complainant also manufactures vehicles in the United Kingdom.
The Complainant owns and communicates on the Internet through various websites. The main one is “” (registered on November 22, 1994), but the Complainant has also registered various local websites such as “” in the United Kingdom. The Complainant also holds the registration for “” (registered on November 9, 2003).
The Complainant is the owner of a number of trademark registrations for RENAULT word or word/logo (extracts and copies from official Registries submitted as Annexes 9 – 11 of the Complaint), such as:
International trademark (“IR”) No. 533627, registered on January 12, 1989 and designating United Kingdom;
UK Registration No 471164, registered on July 5, 1926;
UK Registration No 695493, registered on January 23, 1951;
UK Registration No 1496616, registered on April 1, 1992;
UK Registration No 1524096, registered on August 12, 1994;
IR No. 224502, registered on October 9, 1959;
IR No. 397376 (RENAULT Boutique), registered on March 22, 1973;
IR No. 589202, registered on March 30, 1992;
IR No. 603606, registered on July 23, 1993;
Community Trademark Registration No. 000089763, registered on December 17, 2001.
When the Complainant found the disputed domain names, registered by the Respondent, together with some other RENAULT-related domain names that were offered for sale on a web site, the Complainant sent a cease-and-desist letter to the Respondent on May 15, 2009. The Respondent responded on May 19, 2009 that he owned various domain names and that he had already made demonstrable preparations for their use. After further correspondence between the parties, the Respondent denied the risk of confusion, contended that the Complainant had no rights to the domain names and offered the Complainant to buy the same for the lump sum of £ 8,236 (Annex 31 of the Complaint).
The Respondent is a programmer / software developer. He registered the disputed domain names and on January 14, 2007, and and on September 21, 2008. 5. Parties' Contentions A. Complainant
The Complainant states that the disputed domain names reproduce entirely the Complainant's trademarks RENAULT which are very well-known in the field of automakers and Complainant's corporate name, adding that the mere adjunction of the words “point”, “stop”, “shop” and “your” are not sufficient to distinguish said domain names from the Complainant's trademark.
As to the domain name, the Complainant points to the fact that the Complainant has based an advertisement campaign on a program called “My Renault”. The adjunction of the term “your” increases the likelihood of confusion as this common word is just a personal pronoun.
The Complainant is the owner of the trademark registration for RENAULT BOUTIQUE, as well as of the domain name . Considering that “shop” is the faithful English translation of the French word “boutique”, the Respondent's domain name is highly similar to the Complainant's trademark RENAULT.
The Complainant further asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain names, as Respondent is not affiliated with Complainant, has no authorization to register any domain names incorporating the Complainants trademark, is not known as RENAULT or similar and has not used the disputed domain names in connection with a bona fide offering of goods or services.
Until the sending of the cease and desist letter, the disputed domain names directed Internet users towards a page with various domain names for sale, all incorporating the Complainant's trademarks. On July 31, 2009, the Complainant noticed that the said domain names directed Internet users towards a blank page.
The Complainant argues that the Respondent has never produced any evidence of the claimed demonstrable preparations of use. On the contrary, the correspondence between the Respondent and the Complainant demonstrated that the sole objective of the Respondent is to make a large profit.
Finally, the Complainant concludes that the disputed domain names were registered and are being used in bad faith.
The Complainant, referring to Renault S.A.S., Automobile Dacia S.A. v. Aritz Goikoetxea Arruti,WIPO Case No. D2008-1042 and Renault Trucks v. Cho, Toongoo,WIPO Case No. D2005-0693 claims that the trademark RENAULT is well-known throughout the world and in the United Kingdom, and that the Respondent must have known of Complainant's rights at the time of registration. Moreover, the Respondent has declared that he owns a RENAULT car.
The domain names are used in bad faith as they are all linked to websites displaying a list of domain names owned by the Respondent and associated with sale prices. The Complainant concludes that the Respondent registered the domain names in order to resell them and to take advantage of the fame and reputation of the Complainant's marks.
The Complainant requests, in accordance with paragraph 4(i) of the Policy, that the Panel issues a decision that the disputed domain names be transferred to the Complainant. B. Respondent
The Respondent denies that the domain names are identical or confusingly similar to any trademarks of the Complainant. Specifically, the Respondent argues that there is no likelihood of confusion on the part of the public.
The Respondent claims to have no knowledge of the Complainant's domain name , prior to Respondent's registration of [being one of the other domain names for sale]. The Respondent further asserts having no knowledge of Complainant's campaign “My Renault” prior to the registration of . The Complainant cannot see how the adjunction of a word (“your”) increases the likelihood of confusion with the original word, stating that it is rather the opposite. Adjunctions of words have significance in their ability to reduce the likelihood of confusion.
The Respondent points out that the “Renault” is not a unique name for the Complainant, the word being also a trademark and company name of a liquor company from Cognac.
The Respondent states that the disputed domain names were registered with a view to developing software to enable the Respondent to provide websites to run in co-operation with small companies providing specialist services for manufacturers vehicles, to provide fair competition to the Complainant. The Respondent adds that he drives a comfortable but unreliable Renault, and has been frustrated by the expense of parts, and difficulty of repairs.
The Respondent claims to have registered and used the domain names in good faith and in accordance with EU competition law.
The Respondent refers to that he has spent months of mainly handwriting ten thousand lines of code (all provided as Annex 18 of the Response), for a database project related to the disputed domain names. The said work is, according to the Respondent, independently witnessed (Annex 20 of the Response).
The Respondent states that he was not interested in selling the domain names, but claims to be legally entitled to quote a price for them as they held significant value to the Respondent given the code prepared for them.
The Respondent denies having attempted to sell the domain names, stating that he “merely re-iterated a price in emails at which they could be purchased at” – a necessary clarification as the Complainant “appeared not to understand the crystal clear text that had been presented on the domain pages”. In summary, the Respondent does not agree in that the disputed domain names were registered or have been used in bad faith. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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 is being used in bad faith. A. Identical or Confusingly Similar
The Complainant is the owner of a number of trademark registrations worldwide, including several registrations within or designating the United Kingdom – the country of Respondent. The oldest UK Registration dates back to July 5, 1926. The Complainant is also the owner of the International Registration No. 224502 RENAULT BOUTIQUE, dated March 22, 1973.
In addition, the Panel concludes that the trademark RENAULT is a well-known mark in respect of vehicles.
The relevant parts of the disputed domain names are , , , and . Accordingly, the domain names consists of Complainant's trademark RENAULT, with the addition of the generic terms “point”, “shop”, “stop” and “your”.
The addition of generic terms does not automatically create a domain name that is not identical or confusingly similar to an existing trademark, especially when the trademark is well known. “Shop” indicates a place where goods and services of RENAULT can be found, and so does the terms “stop” and “point” (often used equivalent for a place or directions to a place). “Your” is the opposite of “my”, which has been used by the Complainant in the advertisement campaign “My Renault”.
While the addition of the said generic words, except for the word “shop”, may not obviously and clearly add to the confusing similarity with the trademark RENAULT per se, they may have such effect on some Internet users and at least they are insufficient to give any distinctiveness to the disputed domain names, see Alstom v. FM Laughna,WIPO Case No. D2007-1736; see also Groupe Auchan v. Jakub Kamma, WIPO Case No. D2007-0565.
Accordingly, the Panel finds that the domain names are all confusingly similar to Complainant's trademark RENAULT, and that in particular is confusingly similar to the trademark RENAULT BOUTIQUE. B. Rights or Legitimate Interests
The Complainant's assertion that Respondent lacks rights or legitimate interests in the disputed domain names can suffice to establish a prima facie case under the Policy. Once a prima facie case has been established, the burden shifts to Respondent to demonstrate that it does have rights or legitimate interests pursuant to paragraph 4(c) of the Policy. See Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624 (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent.”).
The Respondent has not contested the Complainant's statement that the Respondent is not affiliated with the Complainant and has no authorization from the Complainant to register any domain names incorporating the Complainants trademark.
The Respondent seems to be of the opinion that he has legal rights to register and use RENAULT as parts of domain names and with the aim to provide web sites offering services “in fair competition” to the Complainant. However, in this Panel's view, the collateral trademark use necessary to allow reselling, after market sale, customer support, etc. in connection with the Complainant's products does not confer per se the right to use the trademark as a domain name without permission from the trademark owner.
Respondent has claimed that he has made demonstrable preparations to use. There is no bright-line UDRP praxis on what is considered sufficient evidence to constitute demonstrable preparations to use. The result will naturally depend on the circumstances of each case and may vary from case to case. See DigiPoll Ltd. v. Raj Kumar,WIPO Case No. D2004-0939, where the panel ruled against respondent, because “there is no evidence of a business plan or partners, the proposed technology or how it would function, how the business would be financed, a timetable or, indeed, evidence of a single fact about the business other than the intention to develop it at some indeterminate time in the future”, see also Televisa v. Retevision Interactiva S.A., WIPO Case No. D2000-0264, the panel concluded that “Respondent has evidenced that it had made substantial investments, adopted the name “ERESMAS” as its corporate name and as the name of one of its subsidiaries and filed numerous “ERESMAS” trademarks prior to the notification of the Complaint.”
In the present case, the Panel finds no evidence of the Respondent's alleged demonstrable preparations to use the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services, according to paragraph 4(c)(i) of the Policy.
The Respondent has claimed to have spent months of mainly handwriting ten thousand lines of code for a database project related to the disputed domain names. The evidence submitted shows indeed a great number of pages with codes, but nothing indicating that the said code is related to the domain names as such. Further, the witness statement in Annex 20 of the Response is only confirming that the witness had seen Respondent “in operation….a website that [Respondent] was developing relating to services for vehicles, prior to June 2008”. Again, nothing similar to the disputed domain names is mentioned in the statement.
The only actual use of the domain names, prior to this dispute, is the web site offering the said for sale, together with a number of other RENAULT-related domain names – registered or in control by the Respondent. Use of domain names, confusingly similar to someone else's well-know trademark, for the only obvious purpose of selling them does not constitute a bone fide or fair use pursuant to the Policy. See Vance International, Inc. v. Abend, NAF Case No 970871 (“An attempt by a respondent to sell a domain name to a complainant who owns a trademark with which the domain name is confusingly similar for an amount in excess of out-of-pocket costs has been held to demonstrate a lack of legitimate rights or interests.”).
Therefore, the Panel finds that the Respondent has no rights or legitimate interests in respect of the domain names. C. Registered and Used in Bad Faith
The RENAULT trademark is registered and well-known throughout the world including in the United Kingdom, the residence of the Respondent. In addition, the Respondent owns a “Renault” car, described by Respondent as “comfortable but unreliable”, and causing Respondent “frustration by the expense of parts”.
Although the Respondent states that the trademark RENAULT is not unique for the Complainant, there is little real doubt that Respondent had actual knowledge of Complainant's trademark/s at the time of Respondents domain name registrations, and that Respondent in fact registered the disputed domain names with the Complainant in mind.
The close similarities between and , and the Complainant's trademark RENAULT BOUTIQUE and campaign “My Renault” strike the Panel as more than mere coincidences.
The Respondent's only evidenced use of the domain names has been to link them to a site where he offered them for sale, from £ 350 for , up to £1,500 for . When served with the cease-and-desist letter from the Complainant, he offered the ten RENAULT-related domain names at the site (including the disputed 4 names) for the total sum of £7,736. This sum was later raised by the Respondent to £8,236.
In these circumstances, this Panel cannot draw any other conclusions than that the Respondent registered the domain names primarily for the purpose of selling it to Complainant for a valuable consideration in excess of Respondent's documented out-of-pocket costs directly related to the domain names. See The Neiman Marcus Group, Inc. v. AchievementTec, Inc., NAF Case No.192316 (finding the respondent's offer to sell the domain name for $2,000 sufficient evidence of bad faith registration and use under paragraph 4(b)(i) of the Policy).
Thus, the Panel concludes that the domain names are both registered and used in bad faith, and that the Complainant has succeeded in proving the three elements within paragraph 4(a) 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, , , , be transferred to the Complainant.
Petter Rindforth
Sole Panelist
Dated: December 2, 2009
Full & Egal Universal Law Academy