Renault SAS v Super Privacy Service LTD c/o Dynadot / Jose Ferreira

WIPO Case No. D2022-2366

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Renault SAS v. Super Privacy Service LTD c/o Dynadot / Jose Ferreira

Case No. D2022-2366

1. The Parties

Complainant is Renault SAS, France, represented by CSC Digital Brand Services Group AB, Sweden.

Respondent is Super Privacy Service LTD c/o Dynadot, United States of America (“United States”) / Jose

Ferreira, Portugal.[1]

[1] It is evident from the case file that Super Privacy Service LTD c/o Dynadot, United States, is a privacy protection service and that

2. The Domain Name and Registrar

The disputed domain name <renault4.com> is registered with Dynadot, 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 name. On July 6, 2022, 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 Complainant on July 6, 2022, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on July 11, 2022.

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 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.

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The Center appointed Stephanie 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.

On September 1, 2022, the Panel issued a Panel Order inviting both Parties to comment on the date when Respondent registered the disputed domain name. On September 7, 2022, Complainant sent a submission to the Center, substantiating that the disputed domain name was registered by Respondent on or around January 10, 2019. Respondent did not react upon the Panel Order.

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, Instituto Nacional da Propriedade Industrial (Portugal), registration number: 129049, registration date: March 2, 1955, status: active.

Moreover, Complainant has demonstrated to own various domain names relating to its RENAULT trademark, inter alia, since 1994 the domain name <renault.com> which resolves to Complainant’s main Internet presence at “ promoting Complainant’s automobiles and related services worldwide.

Respondent, according to the disclosed WhoIs information for the disputed domain name, is a resident of Portugal. Complainant, in its submission to the Center of September 7, 2022, has substantiated that the disputed domain name was registered by Respondent on or around January 10, 2019. By the time of the rendering of this decision, the disputed domain name is offered on the Internet for online sale, and – as has

been evidenced by Complainant, too – has been so when the Complaint was filed, by then at a purchase

price of EUR 5,420.

Complainant requests that the disputed domain name 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 is at least confusingly similar to Complainant’s
RENAULT trademark as it consists of the latter, simply added by the number “4”, thereby directly pointing
at the “Renault 4”, a well-known model from the range of Complainant’s automobiles. Moreover,
Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed

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domain name since (1) Complainant has not licensed, authorized, or permitted Respondent to use 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 name, (3) the disputed domain name is offered for online sale for an amount of EUR 5,420 that far exceeds Respondent’s out-of-pocket expenses in registering the disputed domain name, and (4) Respondent registered the disputed domain name 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 name in bad faith since (1) by combining Complainant’s RENAULT trademark and the number “4” in the disputed domain name, Respondent has demonstrated knowledge of and familiarity with Complainant’s brand and business, and (2) given that the disputed domain name incorporates the entirety of Complainant’s RENAULT trademark together with the related number “4”, and is made available for online sale at a price far exceeding Respondent’s registration fees, there is no plausible good faith reason or logic for Respondent to have registered the disputed domain name.

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 name is 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 name; and

(iii)      that the disputed domain name has been registered and is 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 name is confusingly similar to the RENAULT trademark in which Complainant has rights.

The disputed domain name incorporates the RENAULT trademark in its entirety. Numerous UDRP panels 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 components (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 number “4” (which directly refers to Complainant’s well-known “Renault 4” car model) does not prevent a finding of confusing similarity arising from the incorporation of Complainant’s RENAULT trademark in the disputed domain name.

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

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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 name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name nor can it be found that Respondent has made a legitimate noncommercial or fair use thereof without intent for commercial gain.

Respondent 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 name and Respondent does not appear to have any trademark rights associated with the term “Renault” on its own. Finally, Respondent obviously so far has not used the disputed domain name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair purpose, but rather to offer it for online sale. UDRP panels have recognized that holding a domain name, even one that consists e.g. of a dictionary word or common phrase, 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 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).

Also, given that the disputed domain name consists of Complainant’s well-known RENAULT trademark together with the number “4” which points to a well-known model from the range of Complainant’s automobiles, the disputed domain name carries, as such, a risk of implied affiliation with the RENAULT trademark which is why offering it e.g. for online sale cannot constitute fair use (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 name. 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 defaulted, 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 name was registered and is being used by Respondent in bad faith.

The circumstances to this case leave no serious doubt that Respondent was fully aware of Complainant’s rights in the well-known RENAULT trademark when registering the disputed domain name and that the latter clearly is directed thereto. Moreover, the fact that the disputed domain name was offered on the Internet for online sale at a minimum price of EUR 5,420 is a clear indication that Respondent registered the disputed domain name primarily for the purpose of selling it to Complainant or to a third party, most likely in excess of its documented out-of-pocket costs directly related to the disputed domain name. Such circumstances are evidence of registration and use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(i) of the Policy.

In this context, the Panel has also noted that Respondent not only made use of a WhoIs Privacy Service in order to conceal its true identity, but also provided fault or incomplete contact information in the WhoIs register for the disputed domain name 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 to the Respondent. These facts at least throw a light on Respondent’s behavior which supports the Panel’s bad faith finding.

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Therefore, the Panel holds 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 name <renault4.com> be transferred to Complainant.

/Stephanie G. Hartung/
Stephanie G. Hartung
Sole Panelist
Date: September 14, 2022

Jose Ferreira, Portugal, is the underlying registrant of the disputed domain name. Therefore, unless otherwise indicated, the term
“Respondent” is used by the Panel in the case at hand to refer to the latter underlying registrant only.