WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Valvoline Licensing and Intellectual Property LLC v. Andrei Arhipov

Case No. D2017-2453

1. The Parties

The Complainant is Valvoline Licensing and Intellectual Property LLC of Lexington, Kentucky, United States of America (“United States” or “US”), represented by CSC Digital Brand Services Group AB, Sweden.

The Respondent is Andrei Arhipov of Moscow, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <valvolinecup.com> is registered with Registrar of Domain Names REG.RU LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2017. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 14, 2017, 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 December 18, 2017 providing the registrant name and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On December 26, 2017 the Complainant filed an amended Complaint.

On December 27, 2017 the Center sent email communication to the Parties regarding language of the proceedings. In response, the Complainant provided its amended Complaint on December 29, 2017, addressing the language of proceeding. The Respondent did not provide any response to the Center on the language of the proceeding.

The Center verified that the Complaint together with the amended Complaints 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 4, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 24, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 26, 2018.

The Center appointed Taras Kyslyy as the sole panelist in this matter on February 1, 2018. 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 Complainant was founded in 1866 by Dr. John Ellis, the inventor of the first lubricating oil and the originator of the VALVOLINE trademark. For over 150 years, VALVOLINE has been one of the most recognized and respected premium consumer brands in the global automotive lubricant industry. Today, the Complainant is known as a leading worldwide producer and distributor of premium branded automotive, commercial and industrial lubricants, and automotive chemicals.

In the United States, the Complainant has significantly positioned itself in all of the key lubricant sale channels. The brand operates and franchises more than 1,070 Valvoline Instant Oil Change centers in the United States. It also has a growing international presence with its products being sold in approximately 140 countries through its extensive sales force and technical support organization.

The Complainant also has a strong Internet presence through its primary website <valvoline.com> as well as its various social media platforms including Facebook, Twitter, and Instagram. According to Similarweb.com, the Complainant’s website located at its primary domain name <valvoline.com> received 3.3 million visits during a 6-month period ranging from May 2017 to October 2017. Further, according to Alexa.com <valvoline.com> has a global ranking of 131,347 and ranks 34,306 in the United States.

The Complainant owns various VALVOLINE trademarks in the United States and the European Union (“EU”), in particular:

- US registration No. 0053237, registration date May 29, 1906, class 4,

- US registration No. 0670453, registration date December 2, 1958, class 1,

- US registration No. 0820566, registration date December 20, 1966, class 2,

- US registration No. 1064261, registration date April 26, 1977, classes 3, 17,

- EU registration No. 009847773, registration date October 25, 2011, classes 1, 4, and 35.

The Complainant claims that its trademarks are also protected in various other jurisdictions around the world.

The disputed domain name was registered on July 16, 2017 and is used for a website which offers mainly adult sexually explicit content including some pornographic elements.

5. Parties’ Contentions

A. Complainant

The disputed domain name <valvolinecup.com> is identical or confusingly similar to the trademark and service mark VALVOLINE in which the Complainant has rights. The registration of the Complainant’s trademarks in the United States and the EU is sufficient to prove its rights even though the Respondent is located in another jurisdiction. Only the second-level domain of the disputed domain name matters to compare it with the Complainant’s trademark. The disputed domain name captures the Complainant’s trademark adding a generic term, which is not sufficient to overcome its confusing similarity.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not commonly known with the disputed domain name. The Respondent is using the disputed domain name to direct Internet users to a website featuring adult content. The disputed domain name was registered significantly after the Complainant filed for registration of its trademark and its first use in commerce.

The disputed domain name was registered and is being used in bad faith. While registering the disputed domain name the Respondent knew or at least should have known of the existence of the Complainant’s well-known trademark. The website at the disputed domain name features sexually-explicit, pornographic content. The Respondent employed a privacy service to hide its identity.

B. Respondent

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

6. Discussion and Findings

A. Language of Proceedings

The language of the Registration Agreement for the disputed domain name is Russian. Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Panel may also order that any documents submitted in a language other than that of the proceeding be translated.

However, as noted by previous UDRP panels, paragraph 11 of the Rules must be applied in accordance with the overriding requirements of paragraphs 10(b) and 10(c) of the Rules that the parties are treated equally, that each party is given a fair opportunity to present its case and that the proceeding takes place with due expedition (see, e.g., General Electric Company v. Edison Electric Corp. a/k/a Edison Electric Corp. General Energy, Edison GE, Edison-GE and EEEGE.COM, WIPO Case No. D2006-0334). Accordingly, account should be taken of the risk that a strict and unbending application of paragraph 11 of the Rules may result in delay, and considerable and unnecessary expenses of translating documents.

In deciding whether to allow the proceedings to be conducted in a language other than the language of the Registration Agreement, and to require the Complainant in an appropriate case to translate the Complaint into the language of that agreement, the Panel must have regard to all “the relevant circumstances”. The factors that the Panel should take into consideration include whether the Respondent is able to understand and effectively communicate in the language in which the Complaint has been made and would suffer no real prejudice, and whether the expenses of requiring translation and the delay in the proceedings can be avoided without at the same time causing injustice to the parties.

The Complainant has submitted in its Complaint that the language of the proceedings be English. The Complainant contends that conducting the proceedings in English would not be disadvantageous to the Respondent as the Respondent has demonstrated an ability to understand and communicate in English, since most part of the Respondent’s website is in English. The Panel is prepared to infer that the Respondent is able to understand and communicate in English based on the substantial content of its website in English. The Panel also notes that the disputed domain name contains the English word “cup”, in addition to the Complainant’s trademark.

The Panel further notes that no objection was made by the Respondent to the Complaint being in English nor any request made that the proceedings be conducted in Russian, the language of the Registration Agreement. This was despite the Center notifying the Respondent on December 27, 2017 in Russian and English that the Respondent is invited to present its objection to the proceedings being held in English and if the Center did not hear from the Respondent by a certain date, the Center would proceed on the basis that the Respondent had no objection to the Complainant’s request that English be the language of the proceedings. The Respondent had the opportunity to raise objections or make known its preference, but did not do so.

The Panel also finds that substantial additional expense and delay would likely be incurred if the Complaint had to be translated into Russian.

Taking all these circumstances into account, this Panel finds that it is appropriate to exercise its discretion and allow the proceedings to be conducted in English.

B. Identical or Confusingly Similar

The Complainant has registered and currently owns trademark VALVOLINE, while the Respondent registered the disputed domain name <valvolinecup.com>.

The generic Top-Level Domain (“gTLD”) “.com” in the disputed domain name is viewed as a standard registration requirement and is disregarded for the purposes of the confusing similarity test (see, e.g., Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275).

The disputed domain name captures the Complainant’s trademark adding the descriptive term “cup”, which still makes the trademark recognizable and does not prevent confusing similarity (see, e.g., eBay Inc. v. ebayMoving / Izik Apo, WIPO Case No. D2006-1307).

Therefore, the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy..

C. Rights or Legitimate Interests

The Respondent provided no evidence that it holds a right or legitimate interest in the disputed domain name.

The Respondent is not commonly known by the disputed domain name, which could demonstrate its right or legitimate interest (see, e.g., World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe, WIPO Case No. D2008-0642).

The website of the disputed domain name provides mostly for adult sexually explicit content with some pornographic elements, which in combination with the established confusing similarity with the Complainant’s trademark confirms lack of the Respondent’s rights or legitimate interest (see, e.g., MatchNet plc. v. MAC Trading, WIPO Case No. D2000-0205).

Therefore, the Complainant has established its case under paragraph 4(a)(ii) of the Policy..

D. Registered and Used in Bad Faith

At the time of registration of the disputed domain names the Respondent knew, or at least should have known, the existence of the Complainant's priorly registered well-known trademark, and registration of the Complainant’s domain name (see, e.g., The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113).

The fact that the website at the disputed domain name provides adult sexually explicit content with pornography elements is a clear indication that the domain name has been registered and used in bad faith (see, e.g., Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022, Miroglio S.p.A. v. Mr. Alexander Albert W. Gore, WIPO Case No. D2003-0557).

The Respondent used a privacy service to register the disputed domain name. According to section 3.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, the use of a privacy or proxy service merely to avoid being notified of a UDRP proceeding, may support an inference of bad faith; a respondent filing a response may refute such inference.. However, no such response was provided by the Respondent. Thus, such use of the privacy service here confirms registration of the disputed domain name in bad faith.

Therefore, the Complainant has established its case under paragraph 4(a)(iii) 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 <valvolinecup.com> be transferred to the Complainant.

Taras Kyslyy
Sole Panelist
Date: February 15, 2018