The Complainant is Valvoline Licensing and Intellectual Property LLC, United States of America (“United States”), represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Super Privacy Service LTD c/o Dynadot, United States / mengdan qian, China.
The disputed domain names <myvalvolineacount.com> and <telllvalvoline.com> (“Domain Names”) are registered with Dynadot, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 12, 2020. On June 12, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On June 15, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 15, 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 June 18, 2020.
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 the Respondent of the Complaint, and the proceedings commenced on June 23, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 13, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 14, 2020.
The Center appointed Nicholas Smith as the sole panelist in this matter on July 22, 2020. 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.
The Complainant is a United States company, founded in 1866 that is a worldwide producer and distributor of automotive, commercial, and industrial lubricants. It is especially well-known as a supplier of passenger car motor oil. The Complainant operates 1,070 Valvoline Instant Oil Change centers in the United States and sells its products in over 140 countries. The Complainant provides its products under a business name and trade mark consisting of the term “valvoline” (the “VALVOLINE Mark”) and is the registrant of numerous domain names including the domain names <tellvalvoline.com> and <myvalvolineaccount.com> (“Complainant’s Domain Names”).
The Complainant holds a number of registered trade marks for the VALVOLINE Mark including United States trademark registration number 0053237, registered since May 29, 1906 for lubricating oils in class 4.
The Domain Names <myvalvolineacount.com> and <telllvalvoline.com> were registered on March 16, 2020 and March 18, 2020 respectively. Each of the Domain Names redirect to a website (collectively the “Respondent’s Websites”) that offers sponsored listings (often referred to as pay-per-click advertisements) some of which relate to the Complainant and its products (such as Valvoline Synthetic Oil and Valvoline Oil Change Coupons).
The Complainant makes the following contentions:
(i) the Domain Names are identical or confusingly similar to the Complainant’s VALVOLINE Mark;
(ii) the Respondent has no rights nor any legitimate interests in respect of the Domain Names; and
(iii) the Domain Names have been registered and are being used in bad faith.
The Complainant is the owner of the VALVOLINE Mark having registered the VALVOLINE Mark in the United States and various other jurisdictions. The Domain Names wholly incorporate the VALVOLINE Mark along with the misspelled descriptive words “telll” or “my […] acount” and the “.com” generic Top-Level Domain (“gTLD”).
There are no rights or legitimate interests held by the Respondent in respect of the Domain Names. The Complainant has not granted any license or authorization for the Respondent to use the VALVOLINE Mark. The Respondent does not use either of the Domain Names for a bona fide purpose or legitimate noncommercial purpose. Rather the Domain Names resolve to pages with various links to advertisements targeted at the Complainant’s consumers, which do not provide the Respondent with rights or legitimate interests.
The Domain Names were registered and are being used in bad faith. Given the reputation of the VALVOLINE Mark which has been used for over 100 years, the registration of Domain Names that are one-letter, typosquatted versions of the Complainant’s Domain Names can only be taken as an attempt by the Respondent to gain an unfair benefit from the Complainant’s reputation. The Respondent is using the Domain Names for pay-per-click sites, which amounts to bad faith use.
The Respondent did not reply to the Complainant’s contentions.
To prove this element the Complainant must have trade or service mark rights and each of the Domain Names must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the VALVOLINE Mark, having registrations for the VALVOLINE Mark as a trade mark in, amongst other places, United States, the European Union, and Canada. The Domain Names wholly incorporate the VALVOLINE Mark along with the misspelled descriptive words “telll” or “my […] acount” (and the “.com” gTLD, which can be discounted as an essential element of any domain name). Other UDRP panels have repeatedly held that the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element; see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). See also, The Bank of Nova Scotia v. Whois Protection, WIPO Case No. D2007-0884; and, Valero Energy Corporation, Valero Marketing and Supply Company v. Domain Name Proxy, LLC, Navigation Catalyst Systems, Inc., WIPO Case No. D2011-1227.
The Panel finds that each of the Domain Names are confusingly similar to the Complainant’s VALVOLINE Mark.
Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain names. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain names.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Respondent is not affiliated with the Complainant in any way. The Respondent has not been authorized by the Complainant to register or use the Domain Names or to seek the registration of any domain name incorporating the VALVOLINE Mark or a mark similar to the VALVOLINE Mark. There is no evidence that the Respondent is commonly known by the Domain Names or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Names in connection with a legitimate noncommercial fair use or a bona fide offering of goods and services; the use of the Domain Names for what appears to be a parking page with pay-per-click links related to the Complainant’s lubricant products and related services does not amount to use for a bona fide offering of goods and services.
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Names. The Respondent has had the opportunity to put on evidence of its rights or legitimate interests, including submissions as to why its conduct amounts to a right or legitimate interest in the Domain Names under the Policy. In the absence of such a Response, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names under paragraph 4(a)(ii) of the Policy.
For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online 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. (Policy, paragraph 4(b)).
The Panel finds that the Respondent must have been aware of the Complainant and its reputation in the VALVOLINE Mark at the time the Respondent registered the Domain Names. The VALVOLINE Mark consists of a coined term that has been in use by the Complainant for over 100 years. The Respondent has provided no explanation, and none is immediately obvious, why an entity would register two domain names incorporating the VALVOLINE Mark (and misspelled versions of the Complainant’s Domain Names) and redirect it to websites containing links referring to the Complainant and its goods and services unless there was an awareness of and an intention to create a likelihood of confusion with the Complainant and its VALVOLINE Mark. In these circumstances, the Respondent’s conduct in registering the Domain Names when it was aware of the Complainant’s rights and lacked rights or legitimate interests of its own amounts to registration in bad faith.
The Respondent’s Websites contain what appear to be pay-per-click links purporting to offer goods and services in direct competition with the Complainant. In these circumstances, where the Respondent has offered no plausible explanation for the registration of the Domain Names, the Panel finds that that the Respondent is using the Domain Names to intentionally attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the VALVOLINE Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Websites. As such the Panel finds that the Domain Names are being used in bad faith.
Accordingly, the Panel finds that the Respondent has registered and is using the Domain Names in bad faith under paragraph 4(a)(iii) of the Policy.
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 <myvalvolineacount.com> and <telllvalvoline.com> be transferred to the Complainant.
Nicholas Smith
Sole Panelist
Date: August 5, 2020