The Complainant is Renault SAS, France, represented by Dreyfus & associés, France.
The Respondent is Domain Administrator, See PrivacyGuardian.org, United States of America (“United States”) / Simon Pan, China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 31, 2019. On January 2, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 2, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 3, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 8, 2020. The Center verified that the Complaint together with the amended 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 January 15, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 4, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 5, 2020. The Center appointed Nicholas Weston as the sole panelist in this matter on February 24, 2020. 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 is a French automotive company founded in 1898 with businesses that provide automobiles, automotive finance and ancillary services in 134 countries with sales of 2,532,567 vehicles in 2018. The Complainant holds registrations for the trademark RENAULT and variations of it in numerous countries, including, for example, International registration No. 308738 in classes 35 to 41, registered on February 9, 1966. The Complainant owns numerous domain names that comprise of, or contain, the trademark RENAULT, including the domain name The Respondent registered the Disputed Domain Name on June 29, 2019. The Disputed Domain Name resolves to a pay-per-click (“PPC”) parking page that includes links to competing products and services. 5. Parties’ Contentions A. Complainant The Complainant cites its International trademark registrations including No. 308738 registered in 1966 and numerous other registrations around the world, for the mark RENAULT as prima facie evidence of ownership. The Complainant submits that the mark RENAULT is well-known and that its rights in that mark predate the Respondent’s registration of the Disputed Domain Name. It submits that the Disputed Domain Name is confusingly similar to its trademark, because the Disputed Domain Name incorporates in its entirety the RENAULT trademark and that the similarity is not removed by the addition of the word “financial”, or the addition of the generic Top-Level Domain (“gTLD”) “.com”. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it “resolves to a parking page with pay-per click (PPC) links related to [the] Complainant’s field of activities”, and contends that such a respondent has no rights or legitimate interests in the Disputed Domain Name. Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy and Rules having regard to the prior use and fame of the Complainant’s trademarks. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following: (i) that the Disputed 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 Disputed Domain Name; and (iii) that the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark RENAULT in numerous countries including, pursuant to International Trademark No. 603606, in China, where the Respondent appears to be located. The requirements of the first element for purposes of the Policy may be satisfied by a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree,WIPO Case No. D2002-0358). Turning to whether the Disputed Domain Name is identical or confusingly similar to the RENAULT trademark, the Panel observes that the Disputed Domain Name is comprised of: (a) an exact reproduction of the Complainant’s trademark RENAULT; (b) followed by the descriptive word “financial”; (c) followed by the gTLD “.com”. It is well-established that the gTLD used as technical part of a domain name may be disregarded (see Autodesk v. MumbaiDomains,WIPO Case No. D2012-0286). The relevant comparison to be made is with the second-level portion of the Disputed Domain Name, specifically: “renaultfinancial”. It is also well established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it may be confusingly similar to that mark despite the addition of a word, in this case, the word “financial” (see Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; Wal Mart Stores, Inc. v. Kuchora, Kal,WIPO Case No. D2006-0033). This Panel accepts the Complainant’s contention that the addition of the term “financial” after the Complainant’s registered trademark does not serve to distinguish the Disputed Domain Name from the Complainant’s trademark (see Coutts & Co. v. Registration Private, Domains By Proxy, LLC / Anne Wells,WIPO Case No. D2015-1509(“The Panel finds that the disputed domain name is confusingly similar to the Trademarks. The Respondent has taken the Trademarks in their entirety and merely added the descriptive word “financial”. The added word is insufficient to differentiate the disputed domain name and the Trademarks. The Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy lists the ways that the Respondent may demonstrate rights or legitimate interests in the Disputed Domain Name. The Policy also places the burden on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the Disputed Domain Name. Because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles,WIPO Case No. D2000-1306; WIPO Overview of Panel Views on Selected URDP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1). The Complainant contends, prima facie, that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it is misleadingly directing Internet users to a PPC landing web page dominated by links advertising supposed “Peugeot Finance”, “Credit Auto Occasion”, “Auto Occasion”, “Auto Finance”, “Auto Dealer”, “Auto Loans” and “Renault Finance”, thereby illegitimately passing off the owner’s goodwill and reputation for its own benefit. The Complainant also has not licensed, permitted or authorized the Respondent to use the Complainant’s trademark. On any objective view, the Respondent is not a reseller with a legitimate interest in a domain name incorporating a manufacturer’s mark, such that it could meet the tests set out in Oki Data Americas, Inc. v. ASD, Inc., supra. Nor, alternatively, is the Respondent commonly known by the Disputed Domain Name. In the absence of a response, this Panel finds that the Respondent is making an illegitimate commercial use of the Disputed Domain Name. By misleadingly diverting Internet users, it can be inferred that the Respondent is opportunistically using the Complainant’s well-known mark in order to attract Internet users to its website and has been using the Disputed Domain Name to divert Internet traffic to its PPC web page. The Panel finds for the Complainant on the second element of the Policy. C. Registered and Used in Bad Faith The third element of the Policy that the Complainant must also demonstrate is that the Disputed Domain Name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both of these conjunctive requirements. The Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed Domain Name in bad faith. On the issue of registration, the trademark RENAULT is such a famous mark for automobiles and related services that it would be inconceivable that the Respondent might have registered the Disputed Domain Name without knowing of it (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Renault SAS v. Sun International,WIPO Case No. D2010-0670 (“Complainant’s well known trademark”); Renault s.a.s v. Cem Aydin,WIPO Case No. D2018-1706 (“the Respondent must have had this well-known trademark in mind when registering the disputed domain names”); Renault S.A.S v. Daniel Lewis,WIPO Case No. D2016-0173 (“Complainant’s well-known trademark RENAULT”)). Further, a gap of years between registration of a complainant’s trademark and respondent’s registration of a disputed domain name (containing the trademark) can indicate bad faith registration (see Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415). In this case, the Respondent registered the Disputed Domain Name at least 54 years after the Complainant established registered trademark rights in the RENAULT mark. This Panel accepts, as the basis of a further finding of bad faith, the Complainant’s uncontested evidence that “an email server is associated to the disputed domain name, and thus there is a risk that [the] Respondent is engaged in a phishing scheme.” (citing Accor SA v. Domain Admin, C/O ID#10760, Privacy Protection Service INC d/b/a PrivacyProtect.org / Yogesh Bhardwaj,WIPO Case No. D2017-1225 (“There is evidence in the Complaint that an email server has been configurated (sic) on the disputed domain name with a real risk that the Respondent may be engaged in a phishing scheme, aiming to deceive Internet users to believe they were dealing with the Complainant.”). The diversion of Internet users is also a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous UDRP decisions (see L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc.,WIPO Case No. D2005-0623; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163, and Hoffmann-La Roche Inc. v. Samuel Teodorek,WIPO Case No. D2007-1814). On the issue of use, the evidence is that the Disputed Domain Name resolves to a PPC parking page unconnected with any bona fide supply of goods or services by the Respondent. The Panel surmises that the business model in this case, was for the Respondent to passively collect click-through revenue generated solely from the Complainant’s goodwill and Internet users’ inaccurate guessing of the correct domain name associated with the Complainant’s RENAULT financial services. Exploitation of the reputation of a trademark to obtain click-through commissions from the diversion of Internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous UDRP decisions. See Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., supra; Accenture Global Services Limited v. Tulip Trading Company,WIPO Case No. D2015-1520; National Grid Electricity Transmission Plc and NGrid Intellectual Property Limited v. Tulip Trading Company,WIPO Case No. D2016-0036; WIPO Overview 3.0, section 3.5. In the absence of any evidence to the contrary, this Panel finds that the Respondent has taken the Complainant’s trademark RENAULT and incorporated it in the Disputed Domain Name without the Complainant’s consent or authorization, for the very purpose of capitalizing on the reputation of the trademark by diverting Internet users to a PPC parking web page for commercial gain. Accordingly, the Panel finds that the Complainant has satisfied the requirements 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 Name Nicholas Weston
Sole Panelist
Date: March 3, 2020
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