WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Renault SAS, Automobile Dacia S.A. v. WhoisGuard Protected, WhoisGuard, Inc. / Sefiane Kaaber / Renault DACIA, Renault Nissan

Case No. D2020-3315

1. The Parties

1.1 The Complainants are Renault SAS and Automobile Dacia S.A., France, represented by Dreyfus & associés, France.

1.2 The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Sefiane Kaaber, Morocco / Renault DACIA, Renault Nissan, Morocco.

2. The Domain Names and Registrar

2.1 The disputed domain names <daciagroup.co> and <renaultt.com> (the “Domain Names”) are registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 7, 2020. At that time the Domain Names were registered in the name of the Registrar’s privacy service. On December 8, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On December 8, 2020, the Registrar transmitted by email to the Center its verification response disclosing the underlying registrant and contact information for the Domain Names. The Center sent an email communication to the Complainant on December 13, 2020 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 December 15, 2020.

3.2 The Center verified that 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”).

3.3 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 21, 2020. The Center received email from a third party individual claiming to be the wife of the individual in whose name the <daciagroup.co> Domain Name was registered. The email acknowledged receipt of a hard copy of the Complaint and claimed that Mr. Kaaber was not “available until next September 2021”. A similar email was sent to the Center from that individual on December 29, 2020.

3.4 In accordance with the Rules, paragraph 5, the due date for Response was January 10, 2021. No Response was filed. On January 26, 2021, the Center sent an email to the parties stating that due to an administrative oversight various notification emails had not been copied to a number of email addresses that it had for the registrant of the Domain Name. In that email it granted the Respondent a five day period in which to indicate whether it wished to participate to this proceeding. The Center received no reply to that email.

3.5 The Center appointed Matthew S. Harris as the sole panelist in this matter on February 15, 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

4.1 The Complainants are both part of the Renault group, the well-known car manufacturer headquartered in France. The group operated under a number of brands including “Renault” and “Dacia”. “Renault” branded cars have been manufactured since 1898 and around 3.8 million vehicles were sold in 2019. The “Dacia” brand was founded in Romania in 1966 and was acquired by the Renault group in 1999. “Dacia” branded cars are manufactured by the Renault group in Morocco with over 400,000 such cars produced there in 2018.

4.2 The Complainants are the owners of various trade marks that comprise or incorporate the terms “renault” or “dacia”. These include:

(i) European Union Trade Mark No. 0868007 for DACIA as part of a shield device word registered on January 5, 2005 and covering goods and services in classes 12, 36, 37 and 39;

(ii) European Union Trade Mark No. 009732744 for RENAULT as a word mark filed on February 14, 2011, registered on August 22, 2011 and covering services in classes 35, 36, 37, 38, 39, 40, 41, and 42;

(iii) International trade mark No. 1007904 for DACIA in stylized text registered on April 10, 2009 covering goods in classes 12, 35, 36, 37 and 39;

(iv) International trade mark No. 1240009 for RENAULT as a word mark registered on January 23, 2015 covering goods in class 4.

4.3 The Renault group also operated websites promoting products under the RENAULT and DACIA marks from the <renault.com> domain name registered on November 22, 1994; and from the <daciagroup.com> domain name registered on January 17, 2001.

4.4 The <renaultt.com> Domain Name was registered on June 17, 2020 and the <daciagroup.co> Domain Name was registered on July 8, 2020. Although registered in the names of “Renault DACIA” and “Sefiane Kaaber” respectively at different addresses, both addresses are in Morocco and the same contact telephone number is given. The use of the “Renault DACIA” name for the registrant of the <renaultt.com> Domain Name, is also obviously false in that the Domain Name was not registered and is not held by either of the Complainants.

4.5 It would appear that no website has operated from either of the Domain Names, but each were configured for email use.

4.6 On June 18, 2020, the Respondent received an email from “Domain Sourhdi” stating as follows:

“I just bought recently the domain renaultt.com, and I received emails from UPS about a shipment also registration card has been sent to someone inside Renault organization.

If you want a demo, I can forward all emails to an address from your choice to know the risk If someone get this domain, also as you can see, the different between the main domain and my domain is a small “t” at the end.

If you’re interested, Please feel free to contact me.”

4.7 On August 31, 2020 and September 1, 2020 the Complainants received emails copied to email addresses that included email addresses using the Domain Names.

4.8 Further on September 1, 2020 the Complainants received an email from “Soufian CS” stating as follows:

“Hello,
I’m reaching you out to inform you that I received many of your confidential emails since your domain [Daciagroup.com] and mine [Daciagroup.co] are close to each other.
I would like to tell you that all your emails are safe.
I’m curious to know if you’re interested to recover the domain name + emails.
Feel free to contact me.”

5. Parties’ Contentions

A. Complainant

5.1 The Complaint (as amended) contains a request for consolidation of proceedings in respect of the Domain Names. It contends that notwithstanding the fact that the Domain Names are registered in different names, they are nevertheless under common control. In this respect, the Complainants contend that (a) the Domain Names are similar in composition, (b) both used the same privacy service, (c) the Domain Names were registered less than a month apart, (c) registration details for the Domain Names give the same phone number and also email addresses that contain the text “@delbi”.

5.2 The Complainants describe their business, names, and marks. They contend that each of the Domain Names incorporates one of those marks combined, in the case of <daciagroup.co> with the ordinary word “group” and the country code Top-Level Domain (“ccTLD”) “.co”, and in the case of <renaultt.com>, with an additional letter “t” and the generic Top-Level Domain (“gTLD”) “.com”. As such, they claim the Domain Names are confusingly similar to trade marks in which the Complainants have rights.

5.3 The Complainants also claim that the registrant of the Domain Names has no right or legitimate interest in the Domain Names. It asserts that various examples of such rights to be found in the Policy do not apply and also that it is not possible to conceive a plausible circumstance in which the registrant could legitimately use the Domain Names.

5.4 The Complainants also contend that it is inconceivable that the registrant did not have the Complainants’ trade marks in mind at the time of registration of the Domain Names. They claim that the Domain Names were used for phishing attempts sent from email addresses using each of the Domain Names on September 1 and 2, 2020. They further rely upon the emails sent to the Complaints identified in the Factual Background section of this decision. Given this, they claim that the Domain Names were registered and used in bad faith.

B. Respondent

5.5 The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1 There are no exceptional circumstances within paragraph 5(f) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of any person to lodge a Response.

6.2 Notwithstanding the lack of a formal Response, it remains incumbent on the Complainant to make out its case in all respects set out in paragraph 4(a) of the Policy. Namely, the Complainant must prove that:

(i) the Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names (paragraph 4(a)(ii)); and

(iii) the Domain Names have been registered and are being used in bad faith (paragraph 4(a)(iii)).

6.3 However, under paragraph 14(b) of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”.

6.4 The Panel will address each aspect of the Policy in turn, but before doing so it is necessary to address the Complainants request for consolidation.

6.5 The Panel accepts that notwithstanding the different names used for the Registrant of the Domain Names, they are indeed controlled by the same person. In this respect, the timing of the registration of the Domain Names, the fact that they are (as is discussed in greater detail later on in this decision) typo-squatting variants of domain names used by the Complainant and have been used in a similar manner, all support that claim. However, particularly compelling is that the contact email address for each Domain Name is similar, the name given for the registrant of the <renaultt.com> Domain Name is obviously false, and the contact telephone number given for both Domain Names is the same Moroccan telephone number.

6.6 Given this, the Complainants request for consolidation is granted. Reference to the Respondent in the rest of this Complaint should be understood accordingly.

A. Identical or Confusingly Similar

6.7 The Panel accepts that Renault SAS owns trade mark rights for RENAULT and that Automobile Dacia S.A., owns trade marks rights for DACIA albeit in various stylized forms. Further, the Panel accepts that (a) the <renaultt.com> Domain Name can only sensibly be understood as the term “renault” combined with an addition letter “t” and the gTLD “.com”, and (b) the <daciagroup.co> Domain Name can only be sensibly understood as the term “dacia” combined with the word “group” and the ccTLD “.co”.

6.8 Accordingly, the Panel accepts that the Complainants’ respective marks are clearly recognisable in the Domain Names (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”)) and the Complainants have thereby satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests and Registered and Used in Bad Faith

6.9 It is usual for panels under the Policy to consider the issues of rights or legitimate interests, and registration and use in bad faith in turn. However, in the present case it is more convenient to consider those issues together. See section 2.15 of WIPO Overview 3.0.

6.10 The Complainant contends that the Domain Names have been used to send emails purporting to come from the Complainants when they do not, as part of some phishing scam. If the Domain Names were registered and held for such a purpose, the Complainants’ case succeeds. There are no rights or legitimate interests in holding a domain name for the purpose of engaging in such fraudulent impersonation. Further, the registration and use of a domain name for such a purpose involves registration and use in bad faith (see, for example, Vestey Group Limited v. George Collins, WIPO Case No. D2008-1308). Such activity is a clear-cut example of bad faith registration and use of a domain name, regardless of whether it obviously falls within the examples of circumstances indicating bad faith set out in paragraph 4(b) of the Policy.

6.11 Although use for phishing purposes is clearly alleged and even though the dates that these emails were said to be sent are given, copies of these alleged phishing emails are not provided. The Panel recognises that material of this sort can sometime be sensitive, but these sensitivities can usually be addressed, for example, by the redaction of parts of those emails. Also, there are parts of the Complaint that suggest that the Complainants’ concern is about the potential, as opposed to the actual, use of the Domain Names for phishing purposes.

6.12 Further, although copies of these alleged phishing emails are not provided, the Panel has been provided with documents that show that emails have been sent to email addresses incorporating the Domain Names, potentially due to typographical errors of the Complainants’ employees or third parties, and in which the Respondent notified the Complainants that the Respondent had received these sensitive emails and offered the Domain Names for sale.

6.13 Although it is possible that the Domain Names have been registered and used both for phishing related fraud and for purpose of offering them for sale to the Complainant, that seems somewhat unlikely. A fraudster would rarely wish to bring his or her existence to the direct attention of the entity he or she is fraudulently impersonating.

6.14 In the circumstances, the Panel is not willing to decide this case on the basis that the Domain Names have actually been used for some form of phishing scam. Nevertheless, it can still decide the Complaint in the Complainants’ favour.

6.15 In this respect, it is clear beyond doubt that the Domain Names were registered with the Complaints’ marks in mind and were deliberately chosen as differing by just one letter from domain names used by the Complainants. That is obvious from the Domain Names themselves and from a comparison with the domain names used by the Complainants.

6.16 Further, the Respondent has engaged in fraudulent misrepresentation in that by registering the <renaultt.com> Domain Name in the name of “Renault DACIA” it has falsely represented that this Domain Name is registered and controlled by the Complainants.

6.17 Further, the two emails sent by the Respondent to the Complainants on June 18, 2020 and on September 1, 2020 clearly indicate bad faith. The only sensible conclusion that can be drawn from the content of those emails is that the Domain Names were registered and held with a view to their potential sale to the Complainant, that the risk of misdirection of emails identified by the Respondent was precisely what the Respondent hoped to achieve by means of such registrations, and that the threat of damage to the Complainants by reason of such misdirection was something that the Respondent hoped would induce the Complainants to purchase the Domain Names.

6.18 There are no rights or legitimate interests in holding a domain name for such a purpose and the registration and holding of a domain name for such a purpose is registration and use of a domain name in bad faith.

6.19 It follows that the Complainants have made out the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.

7. Decision

7.1 For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <daciagroup.co> and <renaultt.com>, be transferred to the Complainants.

Matthew S. Harris
Sole Panelist
Date: February 16, 2021