WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Renault SAS v. Sun International Case No. D2010-0670 1. The Parties
The Complainant is Renault SAS of Boulogne Billancourt, France, represented by Cabinet Escande, France.
The Respondent is Sun International of Manhattan Beach, California, United States of America (hereinafter “USA”). 2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 28, 2010. On April 28, 2010, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain name. On April 28, 2010, Network Solutions, LLC 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 May 3, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 23, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 26, 2010.
The Center appointed Marilena Oprea as the sole panelist in this matter on June 4, 2010. 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.
The language of the proceeding is English. 4. Factual Background
The Complainant is RENAULT S.A.S. a worldwide known automaker.
The Complainant owns several trademark registrations for RENAULT, including the following:
- United States of America trademark no. 3072692 with a filing date of October 22, 2001 for the mark RENAULT in class 12;
- International trademark no. 224502 dated October 9, 1959 for the mark RENAULT in classes 7, 8, 12; and
- French trademark no. 92427674 dated July 22, 1992 for RENAULT SPORT and device in classes 3, 8, 9, 11, 12, 14, 16, 18, 20, 21, 24, 25, 28, and 34.
The Complainant also owns numerous domain names incorporating the mark RENAULT, including .
The disputed domain name was registered on October 19, 1998, by the Respondent.
The website directs Internet users to a webpage that presents the Respondent as a car importer of various cars, including Renault. 5. Parties' Contentions A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are given in the present case, as follows:
(i) The domain name is identical to its trademark RENAULT SPORT and confusingly similar to it's highly distinctive and famous RENAULT trademark.
Complainant sent four cease and desist letters starting January 1999, receiving a response in 2004 with a proposal to transfer the domain name in exchange for two vehicles, “one new Clio V6 and one Renault Sport Spider”.
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name:
- Given the fame of the trademarks, consumers will assume the disputed domain name is linked somehow with the Complainant;
- Complainant never granted Respondent the right to use or register the RENAULT SPORT mark;
- The disputed domain name does not reflect Respondent's name;
- Respondent is using the domain name to divert Complainant's consumer to a website which is not related to it; and
- Respondent is apparently using the disputed domain name not only to import Complainant's car, but also other cars, such FORD, AUDI, HONDA.
(iii) The domain name was registered and is being used in bad faith:
- Respondent knew of the RENAULT SPORT trademark and registered the disputed domain name in bad faith given the longstanding fame of the RENAULT trademarks and the presentation of Renault Sport cars made on the website corresponding to the disputed domain name;
- As a response to one of its several cease and desist letters, Respondent offered the transfer of the disputed domain name in exchange of two Renault vehicles; and
- Respondent intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's well known mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or of the cars or services offered on the Respondent's website. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the policy, these rules and any rules and principles of law that it deems applicable.”
In accordance with paragraph 4(a) of the Policy, the Complainant must prove to the Panel that the following three circumstances are cumulatively met in order to obtain the transfer of the disputed domain name:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent does not hold rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used by the Respondent in bad faith.
Consequently, the Panel shall further analyze the eventual concurrence of the above-mentioned circumstances in the present case. A. Identical or Confusingly Similar
There are two requirements that a Complainant must establish under this paragraph, namely: that it has rights in a trade or service mark, and that the domain name is identical or confusingly similar to the mark.
Complainant has held the RENAULT SPORT trademark registration since 1992, and respectively the RENAULT trademark registration since 1959.
The Panel finds that the domain name, after disregarding the “.com” generic Top Level Domain, is identical to Complainant's RENAULT SPORT trademark as it incorporates it entirely, and it is confusingly similar to Complainant's RENAULT trademark.
As per the above mentioned, the Panel finds that the first element of the Policy is established, and Complainant has proven that the disputed domain name is identical to the trademark in which Complainant has rights, pursuant to the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
Complainant has provided a prima facie case under this element of the Policy showing that it has had no relationship with Respondent and has not granted Respondent any right to register and use its trademark. Therefore, the burden of proof on this element shifts to Respondent to demonstrate its rights or legitimate interests in the disputed domain name, either by demonstrating one of the three circumstances under paragraph 4(c) of the Policy or by providing other relevant acceptable grounds.
Respondent failed to submit any Response to the Complaint. However, in the reply to one of Complainant's cease and desist letters, prior to the commencement of the administrative proceeding, Respondent mentioned that “they are independent importers of Renault sport cars and special pieces since 1981” and further stated that “we believe we have done a very good job in our business and have provided very good public relations for Renault cars”. Further, Respondent made an offer in exchange for the transfer of the disputed domain name, which will be further analyzed by the Panel under the bad faith heading below.
The Panel finds that using a third's party well known trademark, without its consent, for personal commercial gain is not indicative of a right or legitimate interest. Such use of the disputed domain name cannot be considered bona fide.
Further, there is no evidence to suggest that Respondent has made a bona fide use of the disputed domain name, or has been known by this domain name, or is making any legitimate noncommercial or fair use of the domain name. To the contrary, the disputed domain name is being used to promote and offer competing products as well as Complainant's Renault cars.
For these reasons, the Panel finds that the second element of the Policy is established, and the Respondent has no rights or legitimate interests in respect of the domain name, pursuant to the Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith
The Panel finds that there is little doubt in this case that the disputed domain name was initially registered with Complainant's trademark and corresponding product in mind as the domain name incorporates entirely Complainant's trademark RENAULT SPORT. Furthermore, the Respondent presented itself as an “independent importer of Renault sport cars” since 1981 (in its reply sent to Complainant's cease and desist letter, provided in Annex 12 to the Complaint) and mentioned that it has obtained the necessary approvals to import the Renault sport automobiles in the USA ever since 1983 (information available on the website corresponding to the disputed domain name, provided in Annex 16 to the Complaint). The disputed domain name was registered in 1998, several years after the above mentioned dates.
In any case, Respondent has no rights, no authorization whatsoever from Complainant with regard to the use of RENAULT and RENAULT SPORT trademarks. To the contrary, the Complainant has sent several cease and desist letters to Respondent to cease from using the RENAULT trademarks and to transfer the disputed domain name to Complainant.
Paragraph 4(b)(iv) of the Policy lists as an example of bad faith registration and use the fact of “using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website.”
Based on the record in this case, Respondent used Complainant's well known trademark in the car industry to attract Internet users to its website for commercial gain, as on the corresponding web page the Respondent appears to have offered for sale Complainant's cars and Complainat's competitor's cars.
Further, as a reward for “protecting the web address and providing years of high visibility, good public relations for Renault” Respondent has requested a “tangible souvenir” for the transfer of the disputed domain name, namely two Renault sport cars. This form of leveraging does not constitute a bona fide use of the domain name and underlines one more time the bad faith use of the disputed domain name.
For all these reasons, the Panel finds that the third element of the Policy is established, and accordingly that the disputed domain name was registered and is being used in bad faith, pursuant to the Policy, paragraph 4(a)(iii). 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 disputed domain name be transferred to the Complainant.
Marilena Oprea
Sole Panelist
Dated: June 18, 2010
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