WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Motul v. Contact Privacy Inc. Customer 0138693539 / Konstantin Speranskii

Case No. D2016-2632

1. The Parties

The Complainant is Motul of Aubervilliers, France, represented by OrdiPat, France.

The Respondent is Contact Privacy Inc. Customer 0138693539 of Toronto, Ontario, Canada / Konstantin Speranskii of Saint Petersburg, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <motul.partners> is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 28, 2016. On December 29, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 29, 2016, 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 the Complainant on January 4, 2017, 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 January 9, 2017, and an amendment to the amended Complaint on January 12, 2017.

The Center verified that the Complaint together with the amended Complaint and the amendment to the 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 January 13, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 2, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 3, 2017.

The Center appointed Mladen Vukmir as the sole panelist in this matter on February 15, 2017. 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

The Panel has determined the following non-contested facts:

(i) the disputed domain name was created on October 26, 2014 (Annex 2 to the Complaint).

(ii) the Respondent is the registrant of the disputed domain name (Annex 2 and the Registrar’s reply to the Request for Registrar Verification of December 29, 2016).

(iii) as listed and evidenced in the Complaint and Annex 6-A and 6-B to the Complaint, the Complainant is the holder of a number of MOTUL trademark registrations, including:

(iv) As listed and evidenced in the Complaint and Annex 7 to the Complaint, the Complainant is the registrant of a large number of domain names incorporating the Complainant’s MOTUL trademark, for instance:

<motul.com> (registered on May 28, 1998)

<motul.fr> (registered on January 20, 1997)

<motul.eu> (registered on June 9, 2006)

<motul.ua> (registered on October 17, 2005)

<motul.ru> (registered on December 1, 1999)

<motul.us> (registered on May 16, 2002)

<motul.jp> (registered on September 30, 2005)

<motul.it> (registered on November 20, 1998)

<motul.co.uk> (registered on June 17, 2009)

(v) the Complainant has used its MOTUL trademark extensively in media, including on the Internet (Annex 1 to the Complaint).

5. Parties’ Contentions

A. Complainant

The Complaint, essentially, asserts that:

(i) MOTUL is a French public company founded more than 160 years ago and is a leading international player in the oil and lubricants sector. The Complainant formulates produces and sells motor vehicle lubricants in more than 100 countries, and has specialized in fields of the automotive market and the industrial field.

(ii) The Complainant is internationally well known through its primary activities but also through sponsorship in car and moto racings.

(iii) The Respondent is a former employee of the Complainant’s Moscow Office.

(iv) The disputed domain name is identical or confusingly similar to the Complainant’s MOTUL trademark. In this regard, the Complainant asserts that:

- it has been using the word “Motul” as the company name for more than 160 years;

- it has 144 valid registered trademarks incorporating the term “motul” worldwide;

- it is the registrant of a large number of domain names (approximatively 400), most of them composed exclusively of, or include, the Complainant’s MOTUL trademark;

- the disputed domain name reproduces in its entirety the Complainant’s MOTUL trademarks and is therefore identical to the Complainant’s MOTUL trademark;

- the addition of the applicable generic Top-Level Domain (“gTLD”) “.partners” to the disputed domain name does not prevent the likelihood of confusion since it is necessary for the registration of the disputed domain name, as held by panels in earlier UDRP decisions; and

- considering that the disputed domain name is identical to the Complainant’s MOTUL trademark, it is bound to create a likelihood of confusion as to the origin and the possible affiliation of the disputed domain name to the Complainant.

(v) The Respondent has no rights or legitimate interest in the disputed domain name, and in support of such claim contends that:

- the disputed domain resolves to a website, which seems to be a Russian hosting provider and the three columns at the center of this website offer the Internet user to click for more information on website creation services, hosting services and email services. There is no need to name a website “motul.partners” to make such a use of it;

- the Respondent has neither rights nor legitimate interests in respect of the disputed domain name. To the best of the Complainant’s knowledge, the Respondent has not registered the trademark MOTUL anywhere in the world;

- the Respondent has never been authorized, licensed, contracted or otherwise permitted by the Complainant to use the Complainant’s trademarks or to register any domain name incorporating the Complainant’s trademark in any way;

- the Respondent used to be the employee of the Complainant in its Moscow Office from September 2005 to June 2008, and the Complainant states that the registration of the disputed domain name has been done with the purpose of preventing the Complainant from reflecting the mark in the corresponding domain name, with the deliberate attempt to tarnish the Complainant’s trademark and disrupting the Complainant’s business.

iv) The Respondent has registered and used the disputed domain name in bad faith, and in this regard the Complainant claims the following:

- the Respondent who made use of a proxy service to conceal his identity could not ignore that the disputed domain name corresponds with the Complainant’s MOTUL trademark, as the Respondent used to work for the Complainant’s Moscow office for almost three years and the Complainant is very active in promoting its MOTUL trademark through sponsorship of well-known sport events, advertising campaigns and press releases;

- panels in earlier UDRP cases have found that the registration of a domain name by a former employee that incorporates the company name of its former employee is sufficient evidence of bad faith and in this regard cites ESAT Digifone Ltd. v. Michael Fitzgerald trading as TELCO Resources, WIPO Case No. D2000-0602;

- the disputed domain name incorporates the company name of his former employer, i.e., the Complainant, and the Respondent must have been aware of the Complainant’s extensive use of and rights to the trademark MOTUL;

- there is a strong likelihood that the consumers will assume that the website connected to the disputed domain name reflecting the Complainant's trademark are controlled or endorsed by the Complainant, over which website the Complainant has no control whatsoever.

B. Respondent

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

6. Discussion and Findings

The Panel now proceeds to consider this matter on the merits in light of the Complaint, the lack of the Response, the Policy, the Rules, the Supplemental Rules and other applicable legal authority pursuant to paragraph 15(a) of the Rules.

A. Identical or Confusingly Similar

Paragraph 4(a) of the Policy provides that a complainant must prove, with respect to the disputed domain name, each of the following:

(i) the domain name is identical or confusingly similar to a trademark 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.

Primarily, the Panel emphasizes that under the general consensus view, the mere fact of ownership of a registered trademark by the complainant is generally sufficient to satisfy the threshold requirement of having trademark rights (see paragraph 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDPR Questions, Second Edition (“WIPO Overview 2.0”)).

The Complainant has submitted sufficient evidence to show that it is the owner of numerous MOTUL trademarks registered in several jurisdictions, including in the Russian Federation, where the Respondent appears to be located.

Moreover, it is well established that the threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the disputed domain name to determine confusing similarity. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the disputed domain name, with the addition of common, dictionary, descriptive or negative terms typically being disregarded as insufficient to prevent threshold Internet user confusion. Application of the confusing similarity test under the UDRP typically involves a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name (see paragraph 1.2 of WIPO Overview 2.0).

After performing the straightforward visual and aural comparison, it is evident to this Panel that the disputed domain name <motul.partners> incorporates the Complainant’s MOTUL trademark in its entirety without any modifications, and that the same MOTUL trademark of the Complainant is clearly recognizable as such within the disputed domain name.

Regarding the applicable gTLD “.partners” in the disputed domain name, it is a consensus view that it is usually disregarded under the confusing similarity test (see paragraph 1.2 of the WIPO Overview 2.0), as the Complainant also pointed out correctly in its Complaint.

For all the foregoing reasons, the Panel finds that the Complainant has satisfied the requirement set forth in paragraph 4(a)(i) of the Policy, i.e., has proven that the disputed domain name is identical or confusingly similar to its MOTUL trademark.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:

“(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trademark or service mark rights; or

(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The consensus view of UDRP panels on the onus of proof under paragraph 4(a)(ii) of the Policy, is summarized in paragraph 2.1 of the WIPO Overview 2.0, whereby: “[…] a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP. […]”.

In the subject matter case, the Respondent is in default, hence, the Panel has evaluated the arguments and evidence submitted by the Complainant and finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests to the disputed domain name.

Namely, the Complainant has established that it is the owner of a number of MOTUL trademarks registered in various jurisdictions around the world, as well as that it has used the same trademarks extensively in media, including the Internet.

The Panel observes that there is neither any relation, disclosed to the Panel or otherwise apparent from the records, between the Respondent and the Complainant, nor evidence that the Respondent has been commonly known by the disputed domain name or has been using the disputed domain name in connection with a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers.

Furthermore, from the records, it does not arise that the Complainant has ever licensed or otherwise permitted the Respondent to use its MOTUL trademark, or to apply for or use any domain name incorporating the same trademark.

This Panel is of the opinion that using the disputed domain name as the portal to the website of what appears to be a Russian Internet Services Provider (the “ISP”) named “REG.RU” cannot be considered as legitimate or fair use of the same domain name. In addition, the Panel holds that such use of the disputed domain name does not constitute a bona fide offering of goods and services. This is in line with views taken by earlier UDRP panels. See Canadian Tire Corporation, Limited v. Texas International Property Associates, WIPO Case No. D2007-1407.

In this Panel’s view, it can be safely concluded that the Respondent deliberately chose to include the Complainant’s MOTUL trademark in the disputed domain name, in order to achieve commercial gain by misleadingly diverting consumers. Especially if one takes into account that there is no indication that the term “motul” would be a generic or dictionary term and that therefore, it is not likely that the Respondent’s choice of words in the disputed domain name was random. Such position of this Panel is further supported by the evidence submitted by the Complainant (printout from the LinkedIn profile of the Respondent - Annex 4 to the amended Complaint), from which it arises that the Respondent was previously employed in the Complainant’s Moscow Office.

Accordingly, the Panel finds that the requirements set forth in paragraph 4(a)(ii) of the Policy have been fulfilled by the Complainant by making the prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name and by the Respondent’s failure to produce any arguments or evidence to the contrary.

C. Registered and Used in Bad Faith

For the purpose 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 the disputed domain name in bad faith:

(i) circumstances indicating that the holder 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or

(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or

(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s 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 holder’s website or location or of a product or service on the holder’s website or location.

Owing to the lack of Response or any other evidence to the contrary, the Panel accepts the Complainant’s arguments substantiated by evidence that, at the time of registration of the disputed domain name, the Respondent knew or should have known about the Complainant’s MOTUL trademark, because of:

- numerous MOTUL trademark registrations worldwide, including in the Russian federation, where the Respondent is located;

- extensive use of the same trademark registrations on the market and the Internet by the Complainant;

- the term “motul” is not a generic or dictionary word; and

- the Respondent was previously employed in the Complainant’s Moscow Office;

Earlier UDRP panels have found bad faith registration based in part on proof that the respondent “knew or should have known” about the existence of the complainant’s trademark (see paragraph 3.4 of WIPO Overview 2.0).

Furthermore, and as already discussed above, the disputed domain name resolves to a website that appears to be a Russian ISP named “reg.ru”. Having in mind the renown of the Complainant and its trademarks, as well as the Respondent’s earlier connection with the Complainant, it is obvious to this Panel that by using the disputed domain name, the Respondent has intentionally attempted to attract Internet users to the website to which the disputed domain name resolves, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the same website. The presence of the Complainant’s MOTUL trademark in the disputed domain name certainly bears weight as a signal to the potential customers and the disputed domain name clearly benefits from the same.

For that reason, the Panel finds the provisions of paragraph 4(b)(iv) of the Policy to be applicable in this case, since the Respondent’s registration and use of the disputed domain name interferes with the Complainant’s business and Internet users might be misled about the source, sponsorship, affiliation, or endorsement of the website to which the disputed domain name resolves. See, e.g., the following decisions issued by panels in earlier UDRP proceedings:

(i) Sanofi v. PrivacyProtect.org / ICS Inc., WIPO Case No. D2012-1293 (<sanofiadventis.com>): “previous UDRP decisions have found bad faith at the time of registration to exist where a domain name is so obviously connected with such a well-known trademark that its very use by someone with no connection with the trademark suggests opportunistic bad faith (LEGO Juris A/S v. Reiner Stotte, WIPO Case No. D2010-0494; and Sanofi-aventis v. Nevis Domains LLC, WIPO Case No. D2006-0303)”;

(ii) Royal Bank of Canada v Henry Chan, WIPO Case No. D2003-0031 (<rbcroyal.com>, <rbccenturabank.com> and <rbcrewards.com>): “The Panel also believes that in using the disputed domain names to redirect Internet users to websites that host links to external websites, including websites of Complainant’s competitors, the Respondent has registered and used the domain names in bad faith. Said use of the contested domain names shows the intention of disrupting the Complainant’s business and/or for the purpose of intentionally attempting to attract, for commercial gain, Internet users to its websites, by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of its websites.”;

(iii) PepsiCo, Inc. v Ali Khan, WIPO Case No. D2004-0292 (<pepsistrawberry.com>): “The fact that the Respondent elected to register a domain name substantially comprising the “PEPSI” trademark indicates that it was a deliberate act to mislead consumers into believing there was a connection with the Complainant.”

Although the use of a privacy or proxy registration service is not in and of itself an indication of bad faith, this Panel holds that the use of such service in this case may be taken as further indication of bad faith on the side of the Respondent, especially taking into account the manner in which the disputed domain has been used by the Respondent. Such position of the Panel is in line with the general consensus view (see paragraph 3.9 of the WIPO Overview).

Given the above, the Panel determines that the disputed domain name has been registered and is being used in bad faith and that the Complainant has fulfilled the third element under paragraph 4(a) of the Policy.

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 <motul.partners> be transferred to the Complainant.

Mladen Vukmir
Sole Panelist
Date: March 1, 2017