The Complainant is Renault SAS, France, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Perfect Privacy, LLC, United States of America / Milen Radumilo, Romania.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 5, 2021. On November 5, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 8, 2021, 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 November 8, 2021 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 November 10, 2021.
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 November 17, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 7, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 8, 2021.
The Center appointed Daniel Peña as the sole panelist in this matter on December 16, 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 BackgroundThe Complainant is a French multinational automobile manufacturer headquartered in Boulogne-Billancourt. Founded in 1899, with over 170,158 employees and presence in 39 countries. The activities of the Complainant’s Group have been organized into three main types of operating activities including; design, manufacture and distribution of automotive products, sales financing and mobility services.
The Complainant is the owner of trademark RENAULT across various jurisdictions:
- United States of America trademark registration number 3072692, registered on March 28, 2006, class 12.
- United Kingdom registration number 00000471164, registered on July 5, 1926, class 12.
- United Kingdom trademark registration number 00001574878, registered on November 10, 1995, class 39.
- European Union trademark registration number 009732744, registered on August 22, 2011, classes 35, 36, 37, 38, 39, 40 and 41.
- International trademark registration number 224502, registered on October 9, 1959, classes 7, 8 and 12.
The Complainant owns five complementary brands including RENAULT, which sold 2.951,971 vehicles worldwide and reported revenues in excess of EUR 43 Billion in 2020 alone.
The disputed domain name was registered on April 9, 2019. The disputed domain name has been used to direct Internet users to a website featuring links to third-party websites. In addition, it resolved to a website that attempted to infect Internet users’ computers with viruses or malware. Finally, the disputed domain name has also been offered for sale.
5. Parties’ Contentions A. ComplainantThe Complainant argued that the disputed domain name is confusingly similar to the Complainant’s trademark RENAULT as the disputed domain name incorporates the entirety of the trademark, the preffix “ce” and a hyphen. This expression “ce” is not sufficient to overcome the confusing similarity with respect to the Complainant’s RENAULT trademark which is reproduced in the disputed domain name.
The Complainant also expressed that the term “ce” which is the abbreviation of the French term “Comité d’Entreprise”, a cultural and employee benefits organization, in other words, it has a significance to the use of the Complainant’s trademark.
The Complainant indicated that the Respondent has no rights to or legitimate interests in respect of the disputed domain name based on the Complainant’s prior use of its trademark RENAULT. The Respondent is not affiliated or related to the Complainant in any way, or licensed or otherwise authorized to use the RENUAULT mark in connection with a website or for any other purpose. The Respondent is not using the disputed domain name in connection with any legitimate non-commercial or fair use without intent for commercial gain, is not generally known by the disputed domain name and has not acquired any trademark or service mark rights in that name or mark.
Moreover, the Complainant indicated that the Respondent has intentionally registered and is using the disputed domain name in bad faith, the latter based on the composition of the disputed domain name, that the Respondent chose to register a domain name that is confusingly similar to the Complainant’s trademark, and that the Respondent was fully aware of the fact that they incorporated well recognized and distinctive trademarks in which the Respondent had absolutely no prior rights.
In addition, the Complainant argued that the Respondent’s registration and use of the disputed domain name incorporating the Complainant’s mark indicates a deliberate attempt to capture Internet users into believing that this site is associated with the Complainant’s content. Furthermore, the disputed domain name has been offered for sale for a value that significantly exceeds the costs related to registration fees.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsTo succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(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.
Considering these requirements, the Panel rules as follows:
A. Identical or Confusingly SimilarParagraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant has provided evidence of its rights in the trademark RENAULT on the basis of its multiple trademark registrations in particular in the European Union, and in the United States. A trademark registration provides a clear indication that the rights in the trademark belong to the Complainant (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.2.1).
It has also been established by prior UDRP panels that incorporating a trademark in its entirety into a domain name can be sufficient to establish that the domain name is confusingly similar to a registered trademark. Numerous UDRP panels have recognised that the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark. Such findings were confirmed, for example, within the case Quixtar Investments Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253.
Mere addition of the expression “ce” as well as a hyphen in the disputed domain name does not prevent a finding of confusing similarity with the Complainant’s marks. Furthermore, the addition of the generic Top-Level Domain (“gTLD”) “.com” is not sufficient to prevent the confusing similarity either. As noted in WIPO Overview 3.0, section 1.8: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.” Similarly, the gTLD “.com” does not generally preclude a finding of confusing similarity between the disputed domain name and the complainant’s trademarks in accordance with the well-established practice of previous UDRP panels (see also section 1.11 of WIPO Overview 3.0).
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights, meaning that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsPursuant to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name as the disputed domain name is being used in connection with a page featuring “pay-per-click” (“PPC”) links promoting commercial hyperlinks directly competing with the Complainant’s business.
The Complainant bears the burden of proof in establishing this requirement. In view of the difficulties inherent in proving a negative and because the relevant information is mainly in the possession of the Respondent, it is enough for the Complainant to establish a prima facie case which, if not rebutted by sufficient evidence from the Respondent will lead to this ground being set forth.
Refraining from submitting a formal Response, the Respondent has brought to the Panel’s attention no circumstances from which the Panel could infer that the Respondent has rights or legitimate interests in the disputed domain name.
The Panel will now examine the Complainant’s arguments regarding the absence of rights or legitimate interests of the Respondent in connection with the disputed domain name.
The Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the Complainant’s trademarks in a domain name or in any other manner.
The unrebutted claim of the Complainant that the disputed domain name is being used to resolve to a webpage with PPC links supports a finding that the Respondent lacks rights or legitimate interests in the disputed domain name (see section 2.9 of the WIPO Overview 3.0). The absence of legitimate interest is reinforced by the use made of the domain for malware-related activities as well as by the attempt to obtain an unusual profit from the sale of the disputed domain name.
The Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b)
The Panel finds the Respondent has no rights or legitimate interests in respect of the disputed domain name and that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a disputed domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct;
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
In the Panel’s view, a finding of bad faith may be made where the Respondent “knew or should have known” of the registration and/or use of the trademark prior to registering the disputed domain name. In this case, the widespread commercial recognition of the trademark RENAULT is such that the Respondent must have had knowledge of the trademark before registering the disputed domain name. Furthermore, the use of the descriptive term “ce” and a hyphen in the disputed domain name, which refers to the employee representative committee, indicates that the Respondent was aware of the Complainant at the time it registered the disputed domain name.
Furthermore, the Panel is satisfied that by redirecting the disputed domain name to a website with PPC links referring to the Complainant’s business, 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 the products on its website.
The Complainant provided evidence that the disputed domain name was being used to conduct an apparent fraudulent scheme to collect Internet users’ data by sending them messages falsely indicating that they have received a “virus alert” from a certain company and that they should contact that company’s. This type of illegal activity is manifestly considered evidence of bad faith under the Policy. See WIPO Overview 3.0, section 3.1.4; Wikimedia Foundation, Inc., supra. Therefore, the Respondent’s registration and use of the disputed domain name not only clearly indicate full knowledge of Complainant’s RENAULT mark, but also an attempt to misleadingly divert consumers for Respondent’s own commercial gain in some manner through its fraudulent activities. See Policy, paragraph 4(b)(iv).
Furthermore, as indicated by WIPO Overview 3.0, section 3.1.1, the practice of registering a domain name for subsequent resale (including for a profit) would not, by itself, support a claim that the respondent registered the domain name in bad faith with the primary purpose of selling it to a trademark owner (or its competitor). Instead, circumstances indicating that a domain name was registered for the bad-faith purpose of selling it to a trademark owner can be highly fact-specific.
For the above reasons, the Panel finds that the condition of paragraph 4(a)(iii) of the Policy has been satisfied, the disputed domain name was registered and is being used in bad faith.
7. DecisionFor 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
Daniel Peña
Sole Panelist
Date: December 28, 2021