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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Renault SAS v Clark [2010] DRS 7184 (15 January 2010) URL: http://www.bailii.org/uk/cases/DRS/2010/D00007814_full_decision.html Cite as: [2010] DRS 7184 |
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DISPUTE RESOLUTION SERVICE
DRS 7184
Decision of Independent Expert
Renault SAS (Non-UK Corporation)
and
Dhugal Clark (UK Individual)
1. The Parties:
Complainant: Renault SAS
Contact Name: Nathalie Dreyfus
Address: 13/15 Quai Alphonse Le Gallo
Boulogne Billancourt
Postcode 92100
Country: France
Respondent: Dhugal Clark
Address: 8 Middleham Street
Manchester
Postcode: M14 7NG
Country: GB
2. The Domain Names:
renaultexpress.co.uk
renault-shop.co.uk
renaultpoint.co.uk
renaultplus.co.uk
renaultstop.co.uk
renaultshop.co.uk
Page 1
3. Procedural History
The Complaint was received on 12 October 2009 and validated by Nominet on 13
October. A Response was received and notified to the Parties on 2 November. On
10 November, the Complainant issued a Reply to the Response. The
Complainant's payment in respect of a full expert decision was received on 22
December. On 23 December 2009 Nominet invited the undersigned Peter Davies
("the Expert"), to act as Expert in the case. On the same date Peter Davies
confirmed to Nominet that he knew of no reason why he could not properly accept
the invitation, and further confirmed that he knew of no matters which ought to
be drawn to the attention of the parties, which might appear to call into question
his independence and/or impartiality. The Expert's appointment is dated 23
December 2009.
4. Outstanding Procedural Matters
None
5. Factual Background
The Complainant is a vehicle manufacturer and the owner of a number of
trademarks and domain name registrations based on the trading name "Renault".
The Respondent, in business on his own account, registered certain of the Domain
Names in January 2007 and others in October 2008. The Respondent also
registered domain names incorporating the Complainant's trading name with the
.com suffix.
In their submissions, the Parties refer frequently to "the disputed domain names",
meaning both the .com domain names incorporating the Complainant's trade
name and the Domain Names at issue in this Complaint. This Decision concerns
only the Domain Names set out in paragraph 2.
6. Parties" Contentions
In summarising the Parties" submissions, the Expert refers only to "the Domain
Names" for the sake of brevity. However, for the purpose of understanding what
the Parties themselves have submitted, this expression may be taken to include
the other disputed domain names where the context allows. The Expert has
reviewed the evidence submitted by the Parties in support of their contentions and
summarises them as follows:
6.1 The Complainant
The Complainant has rights in respect of a name or mark that is identical or
similar to the Domain Names.
Page 2
The Complainant is a leading manufacturer of motor vehicles. The Renault group
is currently the world's 4th largest auto maker. It has been present in the United
Kingdom since shortly after the First World War and has been a constituent of the
French CAC40 index since 1995.
The Complainant has commercial and industrial sites worldwide and offers services
such as financing, car rental, maintenance and assistance. It operates in 118
countries, employs 129,000 people and manufactured 2.4 million vehicles in 2008.
It is the market leading European brand for utility vehicles. In the first half of
2009, the Complainant's market share of European cars was 8.4 %.
The Complainant is present in the UK through its subsidiary Renault UK Ltd, whose
business is marketing Renault passenger cars and light commercial vehicles. There
is wide UK press coverage of the Complainant and its activities.
The Complainant owns and communicates on the Internet through various
websites. The main one is www.renault.com, but the Complainant has also
registered local websites such as www.renault.co.uk. These websites allow Internet
users to view models and other customer information.
The Complainant owns RENAULT trademarks throughout the world, including:
• UK Trademark RENAULT 471164 registered on July 5, 1926, covering
goods in class 12.
• UK Trademark RENAULT 695493 registered on January 23, 1951, covering
goods in class 12.
• UK Trademark RENAULT 1524096 registered on August 12, 1994, covering
goods in class 16.
• Community Trademark RENAULT + logo 000089763 registered on
December 17, 2001, covering goods and services in classes 2, 4, 7, 8, 9, 11,
12, 14, 16, 18, 24, 25, 27, 28, 34, 36, 37, 39, 40, 41 and 42
• International Trademark designating the United Kingdom RENAULT
533627 registered on January 12, 1989, covering services in classes 35, 36,
37, 38, 39, 40, 41 and 42.
The Complainant operates many domain names incorporating its trademarks
including: www.renault.com and www.renaultshop.com. The Complainant and its
subsidiary Renault UK Ltd own and operate renault.co.uk through which it offers
products and services in the UK. This domain name was registered before August
1996, more than 10 years before the registration of the Domain Names.
The trademark RENAULT has been protected since 1999 in the European Union,
several years before the registration of the Domain Names. The Respondent could
not be unaware of the trademark owned by the Complainant.
The addition of the words "shop", "express", "plus", "point", "your" and "stop" are
insufficient to give any distinctiveness to the Domain Names. These terms are
common English words and adding generic words is not sufficient to distinguish
Page 3
the Domain Names from the Complainant's trademarks (DRS 2455, Compaq
Trademark B.V. v. Balata.com LLC).
The ...co.uk" extension must not be considered significant as it simply denotes the
country code and is therefore descriptive.
The term "Renault" is known only in relation to the Complainant. It has no
meaning whatsoever in English or in any other language. A Google search of the
word Renault displays several results, all related to the Complainant.
The registration of the Domain Name is an Abusive Registration
The Respondent is not affiliated to or authorised by the Complainant in any way.
The Respondent has no prior rights or any legitimate interest in the Domain
Names. When the Respondent faxed the Complainant to sell the Domain Names,
he did not take the opportunity to state his rights or interest in the Domain
Names. The Complainant's rights in the RENAULT trademark precede the
Respondent's registration by a considerable length of time.
Respondent is not known under the name "Renault" or any similar term.
The Respondent is not making legitimate, non-commercial use of the Domain
Names as they had hitherto resolved to a page offering them for sale. The
Domain Names now resolve to a blank page. The Respondent uses the Domain
Names to generate revenue. The Respondent has no other reason to choose
domain names incorporating the trademark "RENAULT" than to profit from the
Complainant's goodwill (DRS6524, Expedia, Inc. v. Bluestone Ventures Pty Ltd).
The reproduction by the Respondent of "Renault" combined with generic and
descriptive terms such as "point", "stop", "shop" or "express", proves that the
Respondent was aware of the existence of Complainant's trademark. Furthermore,
the Respondent registered eleven domain names similar to the Complainant's
trademark primarily for the purpose of selling them.
6.2 The Respondent
The registration of the Domain Names is not an Abusive Registration:
EU block exemption and anti-monopoly laws aim to erode the restrictive practices
of large oligopolies, The Respondent believes that there will be a growing number
of small businesses wanting to take advantage of this, providing specialist services
for manufacturers" vehicles. This applies particularly to the motor trade where slow
implementation of the block exemption regulations has restricted this expansion.
The Domain Names were registered with the intention of providing websites to run
in co-operation with Renault SAS. The "stop" and "your" domains were potentially
more suitable for non-trading forum sites. The Domain Names were registered to
enable the provision of fair competition.
Page 4
The inclusion of a trademarked word within a domain is not prohibited. The
Complainant did not have any mark identical to the Domain Names. Trademarks
require precise reproduction of lettering, not incorporation, for infringement to
apply. The Complainant was clearly aware of this when they registered extensions
of their main trademarks. No trademarks existed for any of the Domain Names.
Trademark infringement requires "Use of a trademark in the course of trade".
While the Respondent registered the Domain Names intending to conduct legal
business at some point after registration, no trade could be said to have occurred,
as no income has been generated. The Domain Names have not been registered
with any search engines and no attempt has been made to attract traffic. The
number of hits to the Domain Name sites is very low and could be accounted for
by the Respondent's activities and by the Complainant in the period prior to the
Complaint.
The Respondent aims to provide bona fide competition by offering goods and
services via some domains, and non-commercial use for others. The Respondent
aims to use the non-hyphenated Domain Names to provide a range of sales and
services, with each domain having different focus. This is no different to other
companies currently operating with Renault included in their name. As the trade
would be Internet based, and the sites accessible throughout the EU, an attempt
to remove the Domain Names from his possession should be seen as "An abuse
which may affect trade between Member States".
Many other trading websites exist, incorporating "Renault" and known to the
Complainant, which have not been subject to interference. The owners of
http://www.renault-spares.co.uk were contacted by the Complainant's solicitors,
complaining of logos, but no comment was made about inclusion of "Renault"
within their domain.
The Respondent has written ten thousand lines of code for use with the Domain
Names. This permits the sale of vehicles and parts, storing of customer favourite
vehicles, email marketing, booking and supply of services, all integrated with email
notifications and marketing to registered customers. Although not all modules
would be immediately applicable, their relevance will increase as implementation
of EU anti-monopoly law develops. It would have been fruitless to write the code
before registering the Domain Names as they would have been registered by the
time the code was finished. The code was completed a year ago and is ready for
use.
Companies House confirms that the Respondent would have been allowed to
register the company names RenaultShop Ltd, YourRenault Ltd, etc. According to
Paragraph 26c of the Companies Act 1985, clearly in force at the time of
registration, it would only be rejected if it were "the same as a name appearing in
the register", i.e. identical. They confirm that they do not check the Trademark
Registry when deciding whether a name is permitted. No rights are afforded to
any entity, in the registration of new company names, because of their previous
similar registrations. Therefore, the Respondent may register companies
corresponding exactly to the Domain Names. The registration procedure does not
allow rejection of a name by similarly named companies. Evidence is submitted of
businesses incorporating "Renault" in their name. If the Respondent can register a
Page 5
company called RenaultShop Ltd, no permission should be needed to register a
domain name "RenaultShop.co.uk".
Trading Standards confirm that it is legal for the Respondent to operate a
company, including the word Renault in the name, which offers products or
services for Renault vehicles, provided no attempt is made to falsely "pass off"
goods or services.
Trading Standards agree that it is in the public interest to be able to find and
easily identify businesses that supply services for Renault vehicles, and it is correct
and advisable for a company to include the word Renault in its name and domain
if it is providing services exclusively for Renault vehicles. They stated "How else
would the consumer know that a business was providing services for Renault
vehicles?"
Responses to Complainant's points
The statement that "no answer" was sent to the Complainant's reminder on May
22nd is false. The Respondent answered within 30 minutes.
The Complainant expressed a wish to reach an amicable settlement. It is hard to
believe that this is possible when the first communication was a demand to
transfer legal rights and to pay huge expenses to have that occur. The Respondent
tried to reply, but had many other claims upon his time.
The Complainant states that it operates many domain names. RenaultShop.com
redirects traffic to RenaultShop.fr in the same way that abusive registrations
sometimes redirect to unrelated sites. Renault does not "operate the domain
name" and it is unlikely that there has ever been a unique site associated with it.
The Respondent accepts that the Complainant registered RenaultShop.com before
the Respondent registered RenaultShop.co.uk. The Respondent had no knowledge
of this at the time of registration and was unaware of it until notified by the
Complainant. When making a registration, it is impossible to check the ownership
of previously registered domains, and largely irrelevant.
The statement "Complainant has rights in respect of a name or mark that is
identical or similar to the Domain Names" is misleading. The Complainant has
rights in respect of one of the two words within the Domain Names. The claim
that "that the mere adjunctions of the words -¦ are insufficient to give any
distinctiveness to the Domain Names" is false. Adding words increases
distinctiveness and reduces the likelihood of confusion. The Complainant's
argument suggests that Renaultpartsgateway.co.uk is even more likely to be
confused with Renault.co.uk. The quoted case DRS2455 is irrelevant because no
words have been added to form the domains, which are effectively spelling
mistakes.
This statement that "the term "Renault" is unique and is only known in relation to
Complainant" is false, wrongly imputing exclusive rights to the word "Renault".
Jean Antonin Renault founded the Renault Company in 1835, producing brandy,
and registering Trademark 6030 "RENAULT & CO." in 1876.The Company has no
connection to Renault SAS. The use of the word "Renault" to describe a brandy
Page 6
pre-dates the earliest use of the word "Renault" to describe a vehicle by at least
sixty years. It cannot be right to forcibly transfer the Domain Names to a
company with a later interest in the word "Renault".
The Respondent does not have to be affiliated to Renault to provide services for
Renault vehicles. There is no requirement to seek permission from the Complainant
to register the Domain Names. Any such requirement would be contrary to EU
competition and single market rules.
The Respondent "did not take this opportunity to state its rights and.. interests"
previously in depth because he was not asked to do so.
The statement that "the Respondent is not known under the name Renault" is
irrelevant, as the case is about RenaultShop et al. It is legal for the Respondent to
be known by a phrase including the word "Renault", provided no attempt is made
to falsely pass off goods or services as from the Complainant.
The Respondent made preparations for legitimate use of the Domain Names, but
cannot be expected to trade immediately or publicise future competition. The
Domain Names were made available in a fair manner while preparations were
made for their use, at a price affordable to individuals and insignificant to a large
company. The Complainant chose not to accept the terms of sale. The Respondent
was entitled to quote a price which reflected the added value he had created.
However trade in domain names is not the Respondent's aim. The Respondent
accepts that, having invested heavily in the Domain Names, his attitude towards
selling them changed, and that the offer to sell them should not have been left on
the site to which the Domain Names resolved. The Respondent could not be said
to have tried to sell the Domain Names. He merely re-iterated a price at which
they could be bought, as the Complainant appeared not to understand the crystal
clear text on the web pages.
6.3 Reply to the Response
The Complainant exercised its right to submit a Reply to points raised by the
Respondent. In this summary of the Reply, the Expert has omitted those points
which merely re-state matters set forth in the Complaint.
The Respondent states that it has spent a considerable amount of time and effort
preparing a PHP code for the Domain Names. However, the fact that he prepared
this PHP code constitutes neither a bona fide offering of goods and services nor a
demonstrable preparation to use. The date of creation of the PHP code cannot be
ascertained, but, as far as Complainant knows, the document seems to have been
created on October 30, 2009. The Domain Names were registered between 2007
and 2008; thus Respondent would have had more than a year to set up the
websites that he was intending to create. Furthermore, the Respondent could
always use this PHP code for any domain name, as the Domain Names never
appear in the PHP code.
Page 7
7. Discussions and Findings
General
The Expert is required to apply only DRS Policy and Procedure to the Complaint.
Apart from the requirement that a Complainant must show he has Rights which
are enforceable under the laws of the UK or of another country, DRS Procedure
does not attempt to apply the law to Complaints, or to replace legal proceedings.
The Respondent's submissions rely heavily upon discussion of UK and EU law
relating to trademarks, competition, company registration, and trade between
member states of the European Union. The Respondent offers an interpretation
of the law relating to trademarks which challenges the Complainant's claim to
have enforceable Rights in respect of a name which is identical or similar to the
Domain Names. This falls properly within the scope of the Complaint. However
the Respondent's arguments relating to his legal position in registering the
Domain Names and to the anti-competitive behaviour of the Complainant are not
relevant in the context of the DRS Policy.
The Complainant's Rights
Paragraph 2 (a) of the DRS Policy provides that, in order to succeed, the
Complainant must show that
i. the Complainant has Rights in respect of names or marks which are
identical or similar to the Domain Names; and
ii. the Domain Names, in the hands of the Respondent, are Abusive
Registrations.
The Complainant is required to prove to the Expert that both elements are
present on the balance of probabilities.
The Expert accepts that the Complainant has rights in the name Renault by virtue
of its registered trademarks and the goodwill acquired in the course of its business
over many years. The Respondent argues that the Complainant's position is
weakened by the existence of an earlier Renault entity operating in a different
market. This does not, in the Expert's view, compromise the Complainant's Rights
in its trading name.
The Respondent argues that the Complainant's rights are limited to its trading
name and its registered trademark. He argues that the combinations of words in
the Domain Names create new trading identities over which, in the absence of an
intention to deceive on the part of the Respondent, the Complainant may not
exert control. The Expert does not agree with this view. The addition of generic or
descriptive terms designating the goods or services with which a mark is used does
not affect the similarity between the Domain Names and the mark in which the
Complainant has Rights.. Accordingly, the Complainant meets the first
requirement of the Complaint.
Page 8
Abusive Registration
DRS Policy states that Abusive Registration means:
a Domain Name which either:
i. was registered or otherwise acquired in a manner which, at the time
when the registration or acquisition took place, took unfair advantage of or
was unfairly detrimental to the Complainant's Rights; or
ii. has been used in a manner which has taken unfair advantage of or has
been unfairly detrimental to the Complainant's Rights;
Paragraph 2 of the DRS Policy provides a non-exhaustive list of factors which may
be evidence that the Domain Name is an Abusive Registration which includes the
following:
i. Circumstances indicating that the Respondent has registered or
otherwise acquired the Domain Name primarily:
A. for the purposes of selling, renting or otherwise transferring the Domain
Name to the Complainant or to a competitor of the Complainant, for
valuable consideration in excess of the Respondent's documented out-of-
pocket costs directly associated with acquiring or using the Domain Name;
B. as a blocking registration against a name or mark in which the
Complainant has Rights; or
C. for the purpose of unfairly disrupting the business of the Complainant;
ii. Circumstances indicating that the Respondent is using or threatening to use
the Domain Name in a way which has confused or is likely to confuse people
or businesses into believing that the Domain Name is registered to, operated
or authorised by, or otherwise connected with the Complainant;
Paragraph 4 of the Policy sets out a non-exhaustive list of factors which may be
evidence that the Domain Name is not an Abusive Registration including the
following:
i. Before being aware of the Complainant's cause for complaint (not
necessarily the 'complaint' under the DRS), the Respondent has:
A. used or made demonstrable preparations to use the Domain Name
or a domain name which is similar to the Domain Name in connection with
a genuine offering of goods or services;
The Complainant alleges that the Respondent's aim is to sell the Domain Names
in contravention of Paragraph 2.i.A of the Policy. The Respondent claims to have
made no money from his ownership of the Domain Names and that he was
Page 9
making good faith preparations to use the Domain Names in connection with a
genuine offer of goods or services. However, the Respondent does not dispute
that prior to the Complaint the Domain Names resolved to pages carrying the
Respondent's offer to sell the Domain Names. The Respondent offers an
explanation for this fact which is not sufficiently persuasive to avoid a conclusion,
on the balance of probabilities, that there was an intention to offer the Domain
Names for sale, as contemplated by Paragraph 2.i.A of the Policy. The Respondent
admits that a continuing offer for sale took place, and irrespective of his
intentions, this could be seen as abusive.
The Respondent seeks to show that he made preparations to use the Domain
Names, in accordance with Paragraph 4.i.A of the Policy, and provides evidence in
the form of a computer programme. The probative value of this evidence is
uncertain however, as it makes no reference to Renault and is not dated, labelled
or explained in any way that might connect it unambiguously to the Respondent's
defence of his actions.
The Expert therefore finds, on the balance of probability, that the Registrations are
Abusive Registrations in the hands of the Respondent.
8. Decision
The Complainant has Rights in respect of names or marks which are identical
or similar to the Domain Names and the Domain Names, in the hands of the
Respondent, are Abusive Registrations. The Expert directs that the Domain
Names be transferred to the Complainant.
Signed: Peter Davies Dated 15 January 2010
Page 10