The Complainant is Renta 4 Banco S.A., Spain, represented by Neudomains Digital, Spain.
The Respondent is caihong fu, China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on April 12, 2021. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 6, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On May 6, 2021, the Center also transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed the request that English be the language of the proceeding on the same day. The Respondent did not comment on the language of the proceeding. 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 the Respondent of the Complaint in Chinese and English, and the proceedings commenced on June 18, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 8, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 9, 2021. The Center appointed Matthew Kennedy as the sole panelist in this matter on July 27, 2021. 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 the holding company of a group of companies providing investment and asset management services. The Complainant itself owns multiple registrations for trademarks that are not relevant to this dispute. However, one of its group companies, Renta 4 Sociedad de Valores S.A., owns multiple registrations for multiple trademarks that are relevant to this dispute, including the following: - Spanish trademark registration number 2767509 for a semi-figurative RENTA4 mark, registered from April 19, 2007, specifying goods and services in classes 9, 16, 35, 36, 38, 41 and 45; and - European Union trademark registration number 6750038 for a semi-figurative RENTA4 mark, registered from February 12, 2009, specifying goods and services in classes 9, 16, 35, 36, 38, 41 and 45. The Respondent is an individual resident in China. The disputed domain name was registered on March 30, 2020. It does not resolve to any active website; rather it is passively held. 5. Parties’ Contentions A. Complainant The disputed domain name is identical and/or confusingly similar to the Complainant’s RENTA4 mark. The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not commonly known by the disputed domain name and the Complainant has not granted permission for the Respondent to use the RENTA4 mark in a domain name. The disputed domain name was registered and is being used in bad faith. The fact that Respondent chose the word “renta4” to make up the disputed domain name is evidence per se of his bad faith. This selection was deliberate and not a product of chance: “Renta4” is not a common word in the Spanish language. Given the well-known character of the RENTA4 trademark, the Respondent simply could not have been unaware of it. The Respondent’s registration of the disputed domain name prevents the Complainant from reflecting its own mark in that corresponding domain name. The use of the disputed domain name has no imaginable good faith use. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the Proceeding Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese. The Complainant requests that the language of the proceeding be English. Its main arguments are that the disputed domain name contains English words, the Respondent demonstrated an understanding of English through its employment of a United States-based company to host its website, and the costs of translation of the Complaint would place a significant burden on the Complainant. Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293. The Panel observes that in this proceeding the Complaint was filed in English. Despite the Center having sent the Parties an email regarding the language of the proceeding and a notice of the Complaint in both Chinese and English, the Respondent did not comment or express any interest in participating in this proceeding. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay whereas accepting it in English does not create unfairness to either Party. Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. The Panel would have accepted a Response in Chinese but none was filed. 6.2. Substantive Issues Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. The above three elements apply cumulatively, which means that a failure to prove any one element will result in denial of the Complaint. The overall burden of proof is borne by the Complainant. A. Identical or Confusingly Similar Based on the evidence presented, the Panel finds that Renta 4 Sociedad de Valores S.A. owns the RENTA4 mark. Given that the trademark owner is a wholly-owned subsidiary of the Complainant, the Panel infers the existence of an authorization by the trademark owner for the Complainant to file the Complaint under the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.4.1. The disputed domain name wholly incorporates the RENTA4 mark. The disputed domain name also incorporates the word “blog”. However, given that the trademark remains recognizable within the disputed domain name, the Panel does not consider that the addition of this word prevents a finding of confusing similarity. See WIPO Overview 3.0, section 1.8. The disputed domain name also includes a generic Top-Level Domain (“gTLD”) suffix (“.com”). However, as a mere technical requirement of registration, a gTLD suffix is generally disregarded in the comparison between a domain name and a trademark for the purposes of the first element of paragraph 4(a) of the Policy. See WIPO Overview 3.0, section 1.11. Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy: (i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or (ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or (iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. As regards the first and third circumstances set out above, the disputed domain name, which incorporates the Complainant’s RENTA4 mark, is passively held. It is clear from the Complaint that the trademark owner has not authorized the Respondent to use its mark in a domain name or otherwise. Accordingly, the Panel does not consider that the disputed domain name is being used in connection with a bona fide offering of goods or services within the terms of paragraph 4(c)(i) of the Policy. Nor is the Respondent making a legitimate noncommercial or fair use of the disputed domain name within the terms of paragraph 4(c)(iii) of the Policy. As regards the second circumstance, the Respondent’s name is listed in the Registrar’s WhoIs database as “caihong fu”, not the disputed domain name. There is no evidence indicating that the Respondent has been commonly known by the disputed domain name within the terms of paragraph 4(c)(ii) of the Policy. In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent failed to rebut that prima facie case because he did not respond to the Complaint. Therefore, based on the record of this proceeding, the Complainant has satisfied the second element in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that certain circumstances shall be evidence of the registration and use of a domain name in bad faith but these circumstances are not exhaustive. With respect to registration, the disputed domain name was registered in 2020, after the registration of the Complainant’s RENTA4 mark. That mark is an arbitrary combination of a Spanish word meaning “rent” and the numeral “4”, which has no meaning other than as a reference to the Complainant, its corporate group, and its services. The disputed domain name incorporates RENTA4 as its initial element. The Respondent offers no explanation as to why he chose to register the disputed domain name. Accordingly, the Panel considers it more likely than not that the Respondent knew of the Complainant’s mark at the time he registered the disputed domain name. With respect to use, the Respondent currently makes only passive use of the disputed domain name but this does not preclude a finding of use in bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. In the present dispute, the RENTA4 mark is an arbitrary combination of a Spanish word and a numeral that has no meaning other than as a reference to the Complainant, its corporate group, and its services. The disputed domain name incorporates RENTA4 as its initial element and adds the word “blog”, implying that it will resolve to the Complainant’s blog. Yet the Respondent has no connection to the Complainant. In all these circumstances, the Panel considers it more likely than not that the Respondent is using the disputed domain name in bad faith. Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) 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 Matthew Kennedy
Sole Panelist
Date: August 8, 2021
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