WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
MOTUL v. WhoIs Privacy Protection Service, Internet Invest, Ltd. dba Imena.ua / Alexandr Andrianovich Kazilov
Case No. D2017-1359
1. The Parties
Complainant is MOTUL of Aubervilliers, France, represented by ORDIPAT, France.
Respondent is WhoIs Privacy Protection Service, Internet Invest, Ltd. dba Imena.ua of Kyiv, Ukraine / Alexandr Andrianovich Kazilov of Kyiv, Ukraine.
2. The Domain Name and Registrar
The disputed domain name <motul.parts> (the "Domain Name") is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 17, 2017. On July 17, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 18, 2017, the Registrar transmitted by email to the Center its verification response confirming that WhoIs Privacy Protection Service, Internet Invest, Ltd. dba Imena.ua is listed as the registrant and providing the contact details.
The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on July 21, 2017. In accordance with the Rules, paragraph 5, the due date for Response was set as August 10, 2017.
On July 24, 2017, WhoIs Privacy Protection Service, Internet Invest, Ltd. dba as Imena.ua ("Imena"), sent an email to Complainant, copying the Center, in which it disclosed the underlying registrant information for the Domain Name, indicating that Alexandr Andrianovich Kazilov was the registrant. On July 25, 2017, the Center sent an email response to Imena, pointing out that the Center had requested the Registrar verification of the registrant contact details on July 17, 2017, and that it had received the Registrar's reply on July 18, 2017, and further pointing out that the Registrar did not provide any underlying registrant details at that time in accordance with paragraph 4(b) of the Rules. As such, on July 21, 2017 the Center had formally notified the Complaint to all Registrar and WhoIs related contact details that were provided, in accordance with paragraph 2(a) of the UDRP Rules. The Center also noted to Imena that Complainant was under no obligation to amend its Complaint, and that the due date for Response remained August 10, 2017. The Center forwarded under separate emails the Notification of Complaint documents from July 21, 2017 to the newly-revealed contact details associated with the Domain Name, and noted that any final determination as to Respondent's identity, or further administrative steps, would be at the discretion of the Panel, upon appointment.
On July 28, 2017, further to the disclosure of information by Imena concerning the identity of the registrant for the Domain Name, Complainant submitted a Supplemental Filing entitled "Amended Complaint" naming Alexandr Andrianovich Kazilov as Respondent.
Neither identified registrant submitted any response. Accordingly, the Center notified Respondent's default on August 16, 2017.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on August 28, 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
Complainant is a French public limited company established more than 160 years ago and is a leading international player in the oil and lubricants sector. Complainant has used the word MOTUL as its company name during the same more 160 years. Complainant formulates, produces and sells motor vehicle lubricants in more than 100 countries. Complainant has specialized in two fields: the automotive market and the industrial field. It posted sales of EUR 215,505,800.00 in 2014. Complainant is internationally well−known not only through its primary activities mentioned above, but also through sponsorship in motor sport events.
Complainant has 144 valid trademarks registered throughout the world for the sign MOTUL. Complainant owns numerous registrations for the MOTUL trademark, including:
- French Trademark Registration MOTUL, No. 1712391 dated December 17, 1991, in international classes 1-45.
- International Trademark Registration MOTUL, No. 600872 dated May 6, 1993, in international classes 1 and 4, designating many jurisdictions.
- International Trademark Registration MOTUL, No. 267359 dated March 21, 1963, in international classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 11, 12, 16, 17, 19, 35, 39, 40 and 42, designating many jurisdictions.
- European Union Trademark Registration MOTUL, No. 000548321 filed on May 30, 1997, and dated February 3, 1999, in international classes 1 and 4.
Complainant is also the owner of numerous semi-device trademarks, including:
- United States of America Trademark Registration MOTUL, no. 1333932, filed on August 23, 1984 and dated May 7, 1985, in international class 4.
- International registration MOTUL, no. 1262307, dated January 22, 2015, in international class 9, 25, 28 designating Australia, China, Colombia, European Union, Japan, Republic of Korea, Mexico, Philippines, Russian Federation, Ukraine, United States and Vietnam.
- International registration MOTUL, no. 639702 dated June 6, 1995, in international classes 1 and 4 designating many jurisdictions.
Complainant is also the registrant of numerous domain names, most of them composed exclusively of the MOTUL mark, including:
- <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)
The Domain Name was registered on April 3, 2017. According with the evidence submitted with the Complaint, the Domain Name resolved to a website in Russian language stating: "The store is temporarily closed. We carry out preventive works. Soon the store will be available. Please come back later."
5. Parties' Contentions
(i) Identical or Confusingly Similar
Complainant states that the Domain Name reproduces Complainant's MOTUL trademark in its entirety and, therefore, the Domain Name is identical to the MOTUL mark. Complainant contends that, as held in previous UDRP decisions, when a domain name wholly incorporates a complainant's registered trademark, such as the present case, this fact is sufficient to establish confusing similarity.
Complainant asserts that the addition of the generic top-level domain ("gTLD") ".parts" does not prevent the likelihood of confusion, since a gTLD extension is necessary for the registration of the domain name itself. As held in the previous UDRP decision, it is well established that gTLDs may typically be disregarded in the assessment under paragraph 4(a)(i) of the Policy. Given the Domain Name is identical to Complainant's MOTUL marks, it is likely to create a likelihood of confusion as to the origin and the possible affiliation of the Domain Name to Complainant.
Therefore, Complainant contends the first element under the Policy as set forth by paragraph 4(a)(i) is satisfied.
(ii) Rights or Legitimate Interests
Complainant states that the Domain Name resolves to a webpage in the Russian language announcing the following statement: "The store is temporarily closed. We carry out preventive works. Soon the store will be available. Please come back later." Complainant asserts that this website is apparently preparing to be an online store. However, Complainant contends that Respondent has neither rights nor legitimate interests in respect of the Domain Name. To the knowledge of Complainant, Respondent has not registered the MOTUL mark anywhere in the world. Respondent has never been authorized, licensed, contracted or otherwise permitted by Complainant to use Complainant's trademarks or to register any domain name incorporating Complainant's marks, nor has Complainant acquiesced in any way to such use or registration of the mark by Respondent. Consequently, Respondent has no rights in respect of the Domain Name.
Complainant states that Respondent's use of the Domain Name as a principal identifier of its business on the Internet implies that Respondent is affiliated with Complainant or is otherwise acting with the consent of Complainant, which is not the case. There is nothing in the Domain Name to suggest in any way that Respondent is independent from Complainant. Instead, Respondent has used the MOTUL mark in the Domain Name in a manner that directly suggests that it is Complainant's domain name. This cannot constitute a bona fide offering of goods. Respondent is not in a position to provide any evidence of a bona fide offering of goods and services or of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right or legitimate interest in the Domain Name.
Furthermore, Complainant is known internationally and is very active in promoting its mark through sponsorship of well-known sporting events, advertising campaigns, and press-releases. Complainant issues a weekly online newspaper at "www.motulsportnews.com", which mainly covers Complainant's sponsorship activities worldwide. This newspaper has been published once per week since 2010 and each issue covers several events held worldwide that are sponsored by Complainant. The newspaper is translated into English, French, Russian, Hungarian, Spanish, Portuguese and Chinese to reach a large public.
Complainant states that panelists have recognized the reputation of Complainant's marks in prior UDRP cases, and therefore Respondent could not have been unaware that the Domain Name corresponds to Complainant's registered trademark rights. See Motul v. Contact Privacy Inc. Customer 0138693539 / Konstantin Speranskii, WIPO Case No. D2016-2632 ("Having in mind the renown of the Complainant and its trademarks…."); and MOTUL v. Kalash'yan Aleksandr, Aleksandr Kalash'yan, WIPO Case No. D2017-0830 ("Firstly, the MOTUL mark was registered many years before the disputed domain name. Moreover, the 'Motul' name has been present on the market for over 100 years. In the Panel's opinion, the notoriety of the MOTUL mark in the automotive sector indicate that the Respondent knew or should have known about the Complainant's rights when registering the disputed domain name. As concluded by other UDRP panels: the registration of a well-known trademark by a party, with no connection to its owner and no authorization and no legitimate purpose to use the trademark, is a strong indication of bad faith [citation omitted]").
In sum, Complainant contends that Respondent has no rights or legitimate interest in respect of the Domain Name and the second element under the Policy is satisfied.
(iii) Registered and Used in Bad Faith
Complainant contends that while paragraph 4(b) of the Policy sets out various non-exclusive criteria that are evidence of registration and use in bad faith, UDRP panels have also found that there can be a finding of bad faith when there is passive use of a widely known trademark in a domain name. Complainant states that in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, the panel found that a domain name need not be used in conjunction with an active website and "passive holding" is not intrinsically offensive. However, there are cases where passive holding can amount to bad faith registration and use. The panelist in Telstra identified five factors, which were relevant on the facts of that particular case, summarized as follows: (i) strength of the trademark's reputation; (ii) no evidence of the respondent's actual or contemplated good faith use; (iii) active steps by respondent to conceal its identity; (iv) active provision of false contact details by respondent; and (v) lack of any plausible actual or contemplated active use of the domain name by respondent that would not be illegitimate.
In the instant case, Complainant argues that Respondent, which made use of a "proxy service" to conceal its identity, could not be unaware that the Domain Name corresponds to Complainant's registered trademark rights, as discussed above. Complainant is well-known worldwide. This fact was recognized by UDRP panels in two prior cases involving Complainant, as noted above. Therefore, Respondent cannot ignore that by registering a Domain Name corresponding to Complainant's prior registered trademark rights, it would take the risk of infringing these intellectual property rights. Furthermore, by choosing ".parts" as the gTLD for registering the Domain Name, Respondent knowingly wanted to create confusion with Complainant's products (e.g., lubricants for spare parts like engines, brakes, etc.).
Moreover, Complainant states that given the word MOTUL has no meaning in any language, it must be considered that Respondent registered the Domain Name precisely because it knew it was Complainant's trademark, with full knowledge of the risks that this entails. Complainant's MOTUL mark is incorporated in the Domain Name and is not a generic name or a name that a potential domain name registrant would think of accidentally. Lastly, a simple trademark register search, or even a Google search, prior to the registration of the Domain Name would have informed Respondent of the existence of Complainant's trademarks.
In conclusion, all the above mentioned circumstances confirm that the Domain Name has been registered and used in bad faith.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
As has been recited in many UDRP decisions, in order to succeed in its claim, Complainant must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith.
A. Preliminary Question: Identity of Respondent:
The Panel determines, as a preliminary matter, that following the disclosure by Imena of the underlying registrant information for the Domain Name, Respondent in this case is Alexandr Andrianovich Kazilov.
The Panel also observes that Imena disclosed Respondent's underlying identity after the period provided in paragraph 4(b) of the Rules. The Rules and Policy state that "[a]ny modification(s) of the Respondent's data following the two (2) business day period may be addressed by the Panel in its decision", but do not otherwise specify the steps that the Provider may take under such circumstances. The Panel notes that the Center expeditiously forwarded under separate emails the Notification of Complaint documents to the newly-revealed contact details for Respondent, while indicating that the originally-specified Response due date remained the same (subject to the Panel's ultimate determination to take any additional administrative steps that it deemed appropriate). The Panel considers the Center's actions to be appropriate in these circumstances.
Additionally, Complainant submitted a Supplemental Filing naming the additional registrant, Alexandr Andrianovich Kazilov, and contact information belatedly disclosed by the Registrar as the Respondent. While the Panel considers this submission technically unnecessary at the stage of the proceeding in which it was submitted, the Panel accepts such submission and finds that Respondent had adequate opportunity to respond to the Complaint and Amended Complaint, but chose not to do so.
B. Identical or Confusingly Similar
The Panel determines that Complainant has strong and well-established rights in its MOTUL trademarks, holding registrations in numerous countries and jurisdictions, and conducting operations on a global scale. Further, the Domain Name is virtually identical to Complainant's MOTUL marks, with the Domain Name encompassing Complainant's trademark in its entirety and the only difference being the addition of the ".parts" gTLD.
The Panel therefore finds that that the Domain Name is identical to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
Regarding the second element of the Policy, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 2.1, states that "where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element."
Here, the Panel finds that Complainant has made out a prima facie case, while Respondent has failed to respond to the Complaint. The Panel finds that Complainant has not authorized Respondent to use its MOTUL trademark; that Respondent is not commonly known by the Domain Name; that Respondent has not used the Domain Name for a legitimate noncommercial or fair use, nor used it in connection with a bona fide offering of goods or services; that Complainant's MOTUL mark is well-known and has been used for over 100 years; and that the word "motul" has no meaning in any language, which suggests that Respondent registered the Domain Name to target Complainant's MOTUL trademark.
Section 2.5 of the WIPO Overview 3.0 further describes some of the factors UDRP panels consider when assessing fair use of a domain name, with section 2.5.1 discussing the nature of the domain name itself. As noted at section 2.5, "a respondent's use of a domain name will not be considered 'fair' if it falsely suggests affiliation with the trademark owner; the correlation between a domain name and the complainant's mark is often central to this inquiry" and "[g]enerally speaking, UDRP panels have found that domain names identical to a complainant's trademark carry a high risk of implied affiliation".
In light of the fact that Complainant's MOTUL trademarks consist of a distinctive name and a made-up word and the Domain Name is identical to Complainant's mark, the Panel finds that it is likely implausible that any good faith use could be made of the Domain Name and it carries an impermissibly high risk of implied affiliation with Complainant's mark under the circumsntances.
Accordingly, the Panel finds that Complainant has made a prima facie showing of Respondent's lack of rights or legitimate interests in respect of the Domain Name, which has not been rebutted by Respondent. The Panel thus finds that Complainant has established the second element of the Policy in accordance with paragraph 4(a)(ii).
D. Registered and Used in Bad Faith
The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Name in bad faith. WIPO Overview 3.0, section 3.1, states that "bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant's mark".
Here, the Panel determines, on the balance of the probabilities, that the Domain Name was registered and is being used in bad faith. The Panel observes that Respondent registered the Domain Name, which is identical to Complainant's MOTUL trademark, many years after Complainant had established a strong reputation and goodwill in its mark. Moreover, the word "motul", as noted above, has no meaning in any language. Further, the Panel considers that by choosing the ".parts" gTLD for registering the Domain Name, Respondent likely wanted to create confusion or a sense of association with Complainant and its products. Thus, the Panel finds that Respondent likely targeted Complainant and its MOTUL mark when registering the Domain Name.
In accordance with WIPO Overview 3.0, section 3.3, "the non-use of a domain name (including a blank or 'coming soon' page) would not prevent a finding of bad faith under the doctrine of passive holding." In cases of passive holding, which the Panel considers relevant in this circumstances, UDRP panelists look at the totality of the circumstances, including factors such as: "(i) the degree of distinctiveness or reputation of the complainant's mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent's concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put." Id.
In this case, Complainant's MOTUL trademark has achieved a strong degree of distinctiveness and reputation; Respondent failed to submit a Response or provide any evidence of actual or contemplated good-faith use, (iii) Respondent concealed its identity using a privacy shield service; and, finally, given Complainant's MOTUL trademark consists of a distinctive and made-up word, it is highly implausible that of any good faith use could be made of the Domain Name, especially as it is identical to Complainant's MOTUL trademark.
In conclusion, the Panel determines that, for all of the above reasons, the Domain Name was registered and is being used in bad faith. Accordingly, Complainant has satisfied the third element 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 Name, <motul.parts>, be transferred to Complainant.
Christopher S. Gibson
Date: October 3, 2017