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Renault Trucks v. Cho, Yoongoo [2005] GENDND 1423 (30 August 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Renault Trucks v. Cho, Yoongoo

Case No. D2005-0693

1. The Parties

The Complainant is Renault Trucks, Saint Priest, France, represented by Cabinet Germain & Maureau, Lyon, France. (the “Complainant”).

The Respondent is Cho, Yongoo, Seoul, Rebulic of Korea, (the “Respondent”).

2. The Domain Name and Registrar

The domain name at issue is <renaulttrucks.com> (the “Domain Name”) registered with Online Nic, Inc. d/b/a China-Channel.com. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 30, 2005. On June 30, 2005, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name at issue. On July 4, 2005, 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 for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on July 11, 2005. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 6, 2005.

In accordance with the Rules, paragraph 5(a), the due date for the Response was July 26, 2005. The Respondent did not submit any response. Accordingly, on August 7, 2005, the Center sent a Notification of Respondent Default to the Respondent.

The Center appointed Mayer Gabay as the sole panelist in this matter on August 18, 2005. 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

On the basis of the documents submitted by the Complainant, the following facts can be established:

This case concerns the Domain Name, <renaulttrucks.com> (hereinafter the “Domain Name”).

The Registrar of the Domain Name is Online Nic, Inc. d/b/a China-Channel.com. (the “Registrar”).

The Respondent is Cho, Yoongoo of the Republic of Korea (the “Respondent”).

The Respondent had not submitted a Response to the Complaint or a request to extend the deadline for submission of a Response.

The Complainant is a well-known maker of trucks and industrial vehicles and has been active for many years around the world with dealerships in many countries.

The Complainant is a subsidiary of the well-known automobile manufacturer, Renault and benefits from a worldwide license of use of the trademark RENAULT registered worldwide.

The Complainant has an active website at “www.renault-trucks.com” that refers to local Renault truck web sites all over the world (including the Republic of Korea).

5. Applicable Rules

Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:-

(i) the domain name at issue 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 domain name; and

(iii) the domain name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy sets out, by way of example, four circumstances, each of which, if proven shall be evidence of the registration and use of the domain name in bad faith for the purpose of paragraph 4(a)(iii) above.

6. Parties’ Contentions

6.1 The Complainant

The grounds for the Complaint are:-

(1) The Domain Name is identical or confusingly similar to the trademarks in which the Complainant has rights.

(2) The Respondent has no rights or legitimate interests in the disputed domain name.

(3) The Respondent has registered and is using the Domain Name in bad faith in that he has sought to profit from the famous mark.

(4) The Complainant claims that it has legitimate rights in the RENAULT name and registered the RENAULT domain name and trademark in the Republic of Korea prior to Respondent ‘s registration of the Domain Name.

6.2 The Respondent

No Response was submitted by the Respondent to the Center.

7. Discussion and Findings

7.1 Identical or confusingly similar - Paragraph 4 (a)(i) of the Policy

The Complainant has provided evidence that it is a subsidiary of the well-known automobile manufacturer Renault and that the Complainant benefits from a worldwide license of use of the RENAULT trademarks. The Complainant has also demonstrated that it has common law rights in the trademark RENAULT TRUCKS.

The Panel accepts the contention that the omission of a hyphen “-” between two words would generally cause confusion with a name of the same two words having the hyphen. In the present case, the removal of the hyphen does not change the substance of the domain name or remove the similarity or confusion with the domain name and the trademark RENAULT TRUCKS. An Internet user would presume that <renaulttrucks.com> is the Complainant’s domain name.

The Panel also notes that the disputed Domain Name <renaulttrucks.com> is also suspiciously similar to the Complainant’s domain name <renault-trucks.com>.

The Domain Name <renaulttrucks.com> is confusingly similar to the trademarks in which the Complainant has rights. The Complainant has shown the first element of the Policy.

7.2 Rights or legitimate interests – Paragraph 4(a)(ii) of the Policy

The Complainant has not authorized the Respondent to use the trademark RENAULT TRUCKS or permitted the Respondent to use the Domain Name <renaulttrucks.com>. The Complainant has argued that none of the circumstances in paragraph 4(c) of the Policy are applicable to the present case.

In view of the use of the Domain Name explained under 7.3, it appears that the Domain Name was registered to attract Internet users to the Respondent’s website for his commercial gain.

The Complainant has established a prima facie case that the Respondent lacks rights and legitimate interests in the Domain Name and by not submitting a Response to the Complaint, the Respondent has failed to demonstrate the contrary.

The second element of the Policy has been established.

7.3 Bad faith – Paragraphs 4(a)(iii) and 4(b)(iv)

Paragraph 4(b)(iv) of the Policy establishes that there is evidence of bad faith if the disputed domain name is registered under circumstances indicating that the registration was done as an attempt to attract, for commercial gain, Internet users to the respondent’s website or other on-line 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 the respondent’s website or location.

The Complainant has claimed that the trademark RENAULT TRUCKS is used in a large number of countries, including in the Republic of Korea where the Respondent resides. Considering the fame of the trademarks RENAULT and RENAULT TRUCKS, the Panel finds that the Respondent most likely knew about the Complainant, its activities and trademarks.

The Respondent is using the Domain Name to offer a portal website which lists various sponsored links which seem to benefit the Respondent financially. It also appears that some of the links point towards websites that are dedicated to trucks and similar vehicles thus providing products that compete with the Complainant’s products.

By misdirecting the consumer, the Respondent distracts and delays the consumer from his pursuit of the services offered by the Complainant. Further, the Respondent confuses the consumer who might consider that there is a connection between the Domain Name and the Complainant’s business.

The Panel further notes that there is evidence that the Respondent tried to sell the Domain Name to the Complainant for a sum in excess of the Respondent’s out of pocket costs. This is further indication of bad faith on the part of the Respondent.

In light of the above, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith.

8. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <renaulttrucks.com> be transferred to the Complainant.

Mayer Gabay
Sole Panelist

Dated: August 30, 2005