Complainant is Renault S.A.S of Boulogne Billancourt, France, represented by Dreyfus & associés, France.
Respondent is Daniel Lewis of Leicestershire, United Kingdom of Great Britain and Northern Ireland (UK). 2. The Domain Names and Registrar
The disputed domain names and are registered with 1&1 Internet AG (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 27, 2016. On January 28, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 1, 2016, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on February 8, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 28, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on March 1, 2016.
The Center appointed Gregor Vos as the sole panelist in this matter on March 14, 2016. 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
Complainant, Renault S.A.S. ("Renault"), is part of the Renault Group. The Renault Group is an international company with French roots and with a history of over 115 years. It is among the world's largest automakers and is present in 128 countries, including the UK. Renault is involved in designing and manufacturing passenger and commercial vehicles such as cars, vans, buses, tractors and trucks.
Renault is also involved in the motorsport industry through its subsidiary Renault Sport Technologies, commonly known and marketed as Renault Sport (hereinafter "Renault Sport"), which was founded in 1976. Renault Sport organizes championships worldwide and steers the Renault Group's involvement in motor racing (except Formula One). Many international subsidiaries of Renault have their own Renault Sport division, including Renault UK.
Renault holds the rights to the following trademarks (hereinafter jointly "the Trademarks"):
- European Union (EU) trademark RENAULT (registered on August 8, 2013);
- UK trademark RENAULT (registered on January 23, 1951);
- International trademark RENAULT BOUTIQUE and device (registered on March 22, 1973);
- EU trademark RENAULTSHOP (registered on June 2, 2010);
- International trademark RENAULT SPORT WAY (registered on April 20, 2001);
- EU trademark RENAULT SPORT WAY (registered on May 19, 2005);
- French trademark RENAULT SPORT and device (registered on July 30, 2002).
In addition, Renault (and its affiliates in the Renault Group) uses the following domain names reflecting its trademarks in order to promote its services:
- ;
- ;
- ;
- ;
- .
Respondent, Daniel Lewis, registered the disputed domain names (registered on December 3, 2012) and (registered on December 20, 2012), the disputed domain names are passively held.
Prior to commencement of the current proceedings, there has been correspondence between the parties regarding the disputed domain names. 5. Parties' Contentions A. Complainant
According to Complainant, the disputed domain names are identical or at least confusingly similar to Complainant's trademark RENAULT. The disputed domain names reproduce Complainant's trademark RENAULT in its entirety, which trademark is extensively used across the world. The disputed domain names merely differ from Complainant's other Trademarks by the addition of the generic terms "sport", "shop" and "racing", which do not dispel any likelihood of confusion.
Respondent does not hold any prior rights with respect to the disputed domain names. Respondent has also not shown himself to be commonly known by the name "Renault" or to be in any way affiliated with Complainant. Furthermore, Respondent is not authorized or licensed to use any of the Trademarks. According to Complainant it is unlikely that Respondent intended to develop a legitimate activity through the disputed domain names and Complainant states that the disputed domain names were registered to use the notoriety of the Trademarks to attract Internet users. Thus, Respondent has no rights or legitimate interests in the disputed domain names.
Respondent must also have been well-aware of Complainant's rights at the time of registering the disputed domain names. The aim of the registrations was to take advantage of Complainant's Trademarks. Bad faith is further shown by the fact that upon receipt of written notice by Complainant, Respondent stated that he would be happy to consider an offer for the purchase of the disputed domain names. The disputed domain names have thus been registered and used in bad faith.
Consequently, the Complainant is requesting transfer of the disputed domain names to the Complainant. B. Respondent
Respondent did not reply to Complainant's contentions in the current proceedings. However, correspondence between the parties predating the current proceedings was submitted as Annex 5. Annex 5 includes an email dated January 25, 2016, in which Respondent has indicated that he intends to use the disputed domain names to advertise his own racing activities in the UK. According to Respondent, if the disputed domain names will be used for this purpose, a disclaimer will be put on the website. Respondent also stated that he would be happy to review an offer on the disputed domain names. Any further defenses are unknown. 6. Discussion and Findings A. Identical or Confusingly Similar
The threshold test for confusing similarity under the UDRP involves a comparison between the Trademarks and the disputed domain names to determine the likelihood of Internet user confusion. In order to satisfy this test, the relevant Trademarks need to be recognizable as such within the disputed domain names. The addition of common, dictionary, descriptive, or negative terms are typically insufficient to prevent a finding of confusing similarity. The addition of the generic Top-Level Domain ("gTLD") ".com" also cannot avoid a finding of confusing similarity. In assessing the level of similarity, a visual and/or oral comparison will be made.
The disputed domain names are and . Both disputed domain names contain Complainant's well-known trademark RENAULT in its entirety, and thus portray visual and oral similarity. The trademark is recognizable as such within the disputed domain names. The disputed domain names only differ from the RENAULT trademark by the addition of the generic terms "sport", "shop" and/or "racing". However, the addition of such generic and descriptive terms does not avoid a finding of confusing similarity between the trademark and the disputed domain names.
Similarly, the only way in which the disputed domain names differ from Complainant's trademark RENAULT SPORT and device is by the omission of the "device" and the addition of the generic terms "racing" and "shop". It is similar in the case of Complainant's RENAULT SPORT WAY trademarks. The addition of these generic and descriptive terms are insufficient to overcome the confusing similarity between the Trademarks and the disputed domain names. This is further supported by the fact that Complainant is active in the field of automotive racing and markets its racing activities under the name RENAULT SPORT.
The disputed domain names are similar to the Trademarks to the extent that there is a likelihood that Internet users can – incorrectly – think that the disputed domain names are in some way associated with Complainant. Consequently, the Panel finds that there is confusing similarity in the sense of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Complainant bears the burden of proof of prima facie showing that Respondent has no rights or legitimate interests in the disputed domain names. If Complainant succeeds in making this prima facie case, the burden of production shifts to Respondent, who will then have to come forward with appropriate allegations or evidence demonstrating a right or legitimate interest in the disputed domain names.
All of Renault's trademarks invoked in the current proceedings precede the registration date of the disputed domain names (except for the RENAULT EU trademark). On the other hand, Respondent does not hold any prior rights with respect to the disputed domain names. Respondent has also not shown that he is commonly known by the name "Renault" or that he is in any way affiliated with Complainant. Furthermore, Respondent is not authorized or licensed to use any of the Trademarks or domain names incorporating the Trademarks, nor is he authorized or licensed to seek registration of any domain name incorporating the Trademarks. The use of Renault's Trademarks for promoting Respondent's own activities without any authorization from Renault does not amount to a right or legitimate interest in the domain name.
Also, both disputed domain names resolve to what amount to inactive pages. The disputed domain name shows the webhost's page whilst the disputed domain name directs to an inaccessible page. Respondent stated prior to these proceedings that he was planning to use the disputed domain names to advertise his own racing activities. However, Respondent has not submitted any evidence of reasonable and demonstrable preparations to use the disputed domain names for this or any other purpose. This indicates a lack of legitimate interest in the disputed domain names.
Finally, prior to written notification by Complainant, the disputed domain name was used for a website with a logo "Magento" that seems to have been an online store, as it mentioned "about magento store" and wished Internet users "Happy eCommerce". This cannot amount to a right or legitimate interest, and there are also no other indications of any intention of noncommercial or fair use of the disputed domain names. Given the fact that the disputed domain names portray a high level of similarity to Renault's Trademarks and the fact that the RENAULT trademark enjoys worldwide recognition, it is unlikely that Respondent intended to develop a legitimate activity through the disputed domain names. The Panel deems it more likely that the disputed domain names were registered to use the notoriety of the Trademarks to attract Internet users.
Complainant has prima facie shown that Respondent does not have a right or legitimate interest in the disputed domain names. Respondent in turn failed to show the contrary, as no response was filed in the current proceedings. Consequently, the Panel holds that Respondent has no right or legitimate interest in the disputed domain names in the sense of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
First, the Panel holds that Respondent must have been aware of Complainant's Trademarks, or at least the RENAULT trademark. This follows for example from the fact that Respondent indicated in prior correspondence that he uses a Renault Megane for racing activities, and that the disputed domain names were registered to promote his racing activities. Respondent thus purposefully registered the disputed domain names with the word "renault" in it, referring to the vehicle Respondent uses for racing. Additionally, registration dates of many of the Trademarks precede the registration dates of the disputed domain names, which means that Respondent could have contemplated Complainant's rights.
Consequently, the Panel holds that it has been made sufficiently plausible that the aim of the registrations was to take advantage of the Trademarks and the subsequent Internet user confusion arising out of the similarity between the disputed domain names and Complainant's Trademarks.
Second, evidence of offers to sell disputed domain names are generally held to show bad faith in appropriate circumstances. This is also reflected in paragraph 4(b)(i) of the Policy. In the current proceedings, it has been shown that Respondent stated that he would be happy to consider an offer from Complainant for the purchase of the disputed domain names. Based on the circumstances of the case – including the fact that the websites are not actively used and Respondent's claim of future use is not supported by any evidence – the Panel deems it likely that Respondent registered the disputed domain names in the hope of reselling them to Complainant, which falls under the scope of paragraph 4(b)(i) of the UDRP Policy. In this regard it is noted that the passive holding of a domain name does not preclude the finding of bad faith.
Even if the disputed domain names were not registered for the sole purpose of reselling them to Complainant, it is likely that the disputed domain names were registered to attract Internet users, which also does not amount to fair or good faith use of the disputed domain names. There is no license or other authorization in force justifying this use of Complainant's Trademarks.
Respondent must clearly have been aware of Complainant's well-known rights. Nonetheless, Respondent registered the disputed domain names including (parts of) the Trademarks. By failing to submit a response, Respondent has not shown any circumstances that may demonstrate that Respondent in fact did not register and use the disputed domain names in bad faith.
Taking into account all the above mentioned circumstances, this leads to a finding of bad faith registration and use in the sense of 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 disputed domain names, and be transferred to Complainant.
Gregor Vos
Sole Panelist
Date: April 7, 2016
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