ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Renault SAS v. JInsoo Yoon Case No. D2022-2367 1. The Parties Complainant is Renault SAS, France, represented by CSC Digital Brand Services Group AB, Sweden. Respondent is JInsoo Yoon, Republic of Korea. 2. The Domain Names and Registrar The disputed domain names ("disputed domain name No. 1") and ("disputed domain name No. 2") are registered with DropCatch.com LLC (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 29, 2022. On June 29, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 30, 2022, 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 July 12, 2022. In accordance with the Rules, paragraph 5, the due date for Response was August 1, 2022. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on August 9, 2022. The Center appointed Stephanie G. Hartung as the sole panelist in this matter on August 24, 2022. 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. page 2 4. Factual Background Complainant is a company organized under the laws of France, which operates as a multinational automobile manufacturer with over 170,000 employees worldwide and presences in 39 countries. The activities of Complainant's group of companies include design, manufacture and distribution of automotive products, as well as sales financing and mobility services. Complainant has provided evidence that it is the registered owner of numerous trademarks worldwide relating to its company name and brand RENAULT, including, but not limited, to the following: - Word mark RENAULT, World Intellectual Property Organization (WIPO), registration number: 224502, registration date: October 9, 1959, status: active; - Word mark RENAULT, European Union Intellectual Property Office (EUIPO), registration number: 009732744, registration date: August 22, 2011, status: active; - Word mark RENAULT 5, Instituto Nacional da Propriedade Industrial (Brazil), registration number: 830291237, registration date: March 20, 2012, status: active. Moreover, Complainant has demonstrated to own various domain names relating to its RENAULT trademark, inter alia, since 1994 the domain name which resolves to Complainant's main Internet presence at "www.renault.com", promoting Complainant's automobiles and related services worldwide. Respondent, according to the disclosed WhoIs information for the disputed domain names, is a resident of the Republic of Korea who registered the disputed domain name No. 1 on January 31, 2019, and the disputed domain name No. 2 on April 28, 2016. By the time of the rendering of this decision, both disputed domain names are offered on the Internet for online sale at a minimum offer of USD 4,950. Complainant requests that the disputed domain names be transferred to Complainant. 5. Parties' Contentions A. Complainant Complainant contends that, ever since its foundation in 1899, Complainant has become a globally known and leading brand in the automobile industry worldwide. Complainant submits that the disputed domain name No. 1 is confusingly similar to Complainant's RENAULT trademark as it merely consists of the latter and the additional term "lease", while the disputed domain name No. 2 is identical with Complainant's RENAULT 5 trademark and at least confusingly similar with Complainant's RENAULT trademark, again as it merely consists of the latter and the additional figure "5". Moreover, Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain names since (1) Complainant has not licensed, authorized, or permitted Respondent to use Complainant's RENAULT trademarks in any manner, including in domain names, and Respondent is not sponsored by or affiliated with Complainant in any way, (2) given the WhoIs information, there is no reason to suggest that Respondent is commonly known by the disputed domain names, (3) the disputed domain names are offered for online sale for amounts that far exceed Respondent's out-of-pocket expenses in registering the disputed domain names, and (4) Respondent registered both disputed domain names significantly after Complainant's registration of its RENAULT trademarks and their acquisition of worldwide reputation. Finally, Complainant argues that Respondent has registered and is using the disputed domain names in bad faith since (1) by registering two domain names that fully incorporate Complainant's RENAULT trademark, Respondent has demonstrated knowledge of and familiarity with Complainant's brand and business, and (2) given that the disputed domain names incorporate the entirety of Complainant's RENAULT trademark together with the related terms "lease" and "5", and are made available for online sale at prices far exceeding Respondent's registration fees, there is no plausible good faith reason or logic for Respondent to have registered the disputed domain names. page 3 B. Respondent Respondent did not reply to Complainant's contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, Complainant carries the burden of proving: (i) That the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) That Respondent has no rights or legitimate interests in respect of the disputed domain names; and (iii) That the disputed domain names have been registered and are being used in bad faith. Respondent's default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(f) of the Rules provides that if Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute solely based upon the Complaint. Further, according to paragraph 14(b) of the Rules, the Panel may draw such inferences from Respondent's failure to submit a Response as it considers appropriate. A. Identical or Confusingly Similar The Panel concludes that the disputed domain names are at least confusingly similar with the RENAULT trademark in which Complainant has rights. Both disputed domain names incorporate Complainant's RENAULT trademark in its entirety. Numerous UDRP panels have recognized that where a domain name incorporates a trademark in its entirety, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that trademark (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.7). Moreover, it has been held in many UDRP decisions and has become a consensus view among panelists (see WIPO Overview 3.0, section 1.8), that the addition of other terms (whether e.g. descriptive or otherwise) would not prevent the finding of confusing similarity under the first element of the UDRP. Accordingly, the addition of the term "lease" (which refers to Complainant's automotive business) in the disputed domain name No. 1 and the addition of the figure "5" (which directly refers to the "Renault 5", a model from the range of Complainant's automobiles) in the disputed domain name No. 2 does not dispel the confusing similarity arising from the incorporation of Complainant's entire RENAULT trademark in the disputed domain names. Therefore, Complainant has established the first element under the Policy as set forth by paragraph 4(a)(i). B. Rights or Legitimate Interests The Panel is further convinced on the basis of Complainant's undisputed contentions that Respondent has not made use of the disputed domain names in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain names nor can it be found that Respondent has made a legitimate noncommercial or fair use thereof without intent for commercial gain. Respondent obviously has not been authorized to use Complainant's RENAULT trademark, either as a domain name or in any other way. Also, there is no reason to believe that Respondent's name somehow corresponds with the disputed domain names and Respondent does not appear to have any trademark rights associated with the term "Renault" on its own. Finally, Respondent so far obviously has neither used the disputed domain names for a bona fide offering of goods or services nor for a legitimate noncommercial or fair purpose, but rather to offer the disputed domain names for online sale. UDRP panels have recognized that holding a domain name for resale can be bona fide and is not per se illegitimate under the UDRP (see WIPO Overview 3.0, section 2.1), but have also found that the mere registration of such a page 4 domain name does not by itself automatically confer rights or legitimate interests in the disputed domain name (see WIPO Overview 3.0, section 2.10.1). Moreover, given that the disputed domain names incorporate Complainant's well-known RENAULT trademark in its entirety, they carry, as such, the high risk of implied affiliation with said trademark which is why offering them e.g. for online sale cannot constitute fair use and, thus, cannot confer rights or legitimate interests in the disputed domain names, either (see WIPO Overview 3.0, section 2.5.1). Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in respect of the disputed domain names. Having done so, the burden of production shifts to Respondent to come forward with appropriate evidence demonstrating such rights or legitimate interests (see WIPO Overview 3.0, section 2.1). Given that Respondent has not submitted a Response, it has not met that burden. Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy. C. Registered and Used in Bad Faith The Panel finally holds that the disputed domain names were registered and are being used by Respondent in bad faith. The circumstances to this case, e.g. that Respondent registered two domain names over a period of three years which include Complainant's entire well-known trademarks RENAULT and RENAULT 5 respectively, leave no doubt that Respondent was fully aware of Complainant's rights in said trademarks (notwithstanding their claimed worldwide recognition) when registering the disputed domain names and that the latter clearly are directed thereto. Moreover, the fact that both disputed domain name are offered on the Internet for online sale at a minimum offer of USD 4,950, is a clear indication that Respondent registered the disputed domain names primarily for the purpose of selling them to Complainant or to a third party, most likely in excess of its documented out-of-pocket costs directly related to the disputed domain names. Such circumstances are evidence of registration and use of the disputed domain names in bad faith within the meaning of paragraph 4(b)(i) of the Policy. In this context, it also carries weight in the eyes of the Panel that Respondent obviously provided false or incomplete contact information in the WhoIs register for the disputed domain names since, according to the email correspondence between the Center and the postal courier DHL, the Written Notice on the Notification of Complaint dated July 12, 2022, could not be delivered. This fact at least throws a light on Respondent's behavior which supports the Panel's bad faith finding. Therefore, the Panel concludes that Complainant has also satisfied the third element under the Policy as set forth by paragraph 4(a)(iii). 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. /Stephanie G. Hartung/ Stephanie G. Hartung Sole Panelist Date: September 7, 2022
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