WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Motul v. Ong Ho Anh Tung

Case No. D2018-0768

1. The Parties

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

The Respondent is Ong Ho Anh Tung of Ho Chi Minh City, Viet Nam.

2. The Domain Name And Registrar

The disputed domain name <nhotmotul.com> (“Disputed Domain Name”) is registered with P.A. Viet Nam Company Limited (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on April 5, 2018. On April 6, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 9, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On April 13, 2018, the Center transmitted an email in English and Vietnamese to the Parties regarding the language of the proceeding. The Complainant filed a Vietnamese translation of the Complaint on May 4, 2018. The Respondent did not comment on the language of the proceeding.

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 the Respondent in Vietnamese of the Complaint, and the proceedings commenced on May 22, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 11, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 12, 2018.

The Center appointed Pham Nghiem Xuan Bac as the sole panelist in this matter on June 18, 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 is a French-based company which has traded under the name “MOTUL” for more than 160 years. It is one of the leading oil and lubricant companies in the world carrying on formulation, production and selling of its products in over 100 countries including Viet Nam.

The Complainant owns a large trademark portfolio in many jurisdictions worldwide, in particular in France (trademark registration No. 1712391, registered on December 17, 1991 claiming goods and services in 45 international classes), the European Union (trademark registration No. 000548321 registered on February 3, 1999), the United States of America (trademark registration No. 1333932registered on May 7, 1985) and elsewhere under its international trademarks (trademark registration No. 267359 registered on March 21, 1963; trademark registration No. 639702, registered on June 6, 1995; and trademark registration No. 1262307 registered on January 22, 2015 of which Viet Nam is one of the designated countries/states).

Moreover, the Complainant is the owner of approximately 400 domain names exclusively composing or including the MOTUL mark, which include as but not limited to: <motul.com> (registered on May 28, 1998), <motul.fr> (registered on January 20, 1997), <motul.eu> (registered on June 9, 2006), <motul.com.vn> (registered on July 28, 2003), <motul.vn> (registered on April 14, 2008), and <motulstore.vn> (registered on July 28, 2010).

The Disputed Domain Name was registered with the Registrar on December 22, 2014. According to the Complaint and corresponding evidence, the Disputed Domain Name resolved to an online store with a reproduction of the Complainant’s marks, showing not only the Complainant’s products, but also the Complainant’s competitors’ products.

The Disputed Domain Name is now re-directing Internet users to the Respondent’s website under the domain name <nhotmotul.vn>.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:

(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant contends that the Complainant has been using the word “MOTUL” as the company name for more than 160 years and has 144 valid registered trademarks incorporating the term “MOTUL” worldwide. The Complainant is also the registrant of a large number of domain names (approximately 400), most of them composed exclusively of, or include, the Complainant’s MOTUL trademark;

The Complainant asserts that the Disputed Domain Name comprises the exact mark, MOTUL, preceding by the Vietnamese word “nhot” that means “oil” in English. Such generic word “nhot” which is descriptive of the Complainant’s MOTUL product does not prevent the Disputed Domain Name from being confusingly similar to the Complainant’s trademark.

Finally, the Complainant submits that the addition of the generic Top-Level Domain (“gTLD”) “.com” does not remove the likelihood of confusion in the mind of the public.

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

The Complainant contents that the Disputed Domain Name resolves to an online store, which looks like an official MOTUL website that may lead the public to think it belongs to the Complainant, while the Respondent is not a MOTUL distributor.

The Complainant further contents that the Respondent’s webpage shows not only the Complainant’s products but also the products of the Complainant’s competitors, by which taking advantage from MOTUL’s renown to bait Internet consumers and then switch them to third parties’ products.

The Complainant asserts that the Respondent has no rights in respect of the Dispute Domain Name as it has never been authorized, licensed, contracted or otherwise permitted by the Complainant in any way to use the Complainant’s trademark or to register any domain name incorporating the Complainant’s trademark, nor have the Complainant acquiesced in any way to such use or registration of the trademark by the Respondent.

The Complainant further asserts that the Respondent is neither known under MOTUL name nor the owner of any MOTUL trademarks in Viet Nam nor anywhere else in the world.

(iii) The Disputed Domain Name was registered and is being used in bad faith

The Complainant contends that the Complainant is well-known worldwide, which has also been recognized by panel in several previous UDRP decisions.

The Complainant argues that by registering a domain name which contains the Complainant’s trademark and using it to resolve to a webpage displaying the Complainant’s logo, the Respondent’s intention was to create a likelihood of confusion with the Complainant’s marks for commercial gain.

The Complainant asserts that the Respondent tries to corner the Vietnamese market with respect to the oil and lubricant goods by using a domain name comprised of MOTUL trademark, as if he were the sole MOTUL reseller in Viet Nam, which he is not;

The Complainant further asserts that the Respondent was aware of the existence of the Complainant’s trademark by arguing that prior to the registration of the Disputed Domain Name, a simple search via Google or any other search engine using the keyword “motul” would have shown up results which relate to the Complainant and its product.

Thus, the Complainant submits that the Respondent’s registration and use of the Disputed Domain Name is in bad faith and the third element under the Policy as set forth by paragraph 4(a)(iii) is satisfied.

In light of the above, the Complainant requests that the Disputed Domain Name be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

6.1. Language of the Proceeding

The Complaint was filed in English on April 5, 2018. On April 9, 2018, the Registrar informed that the language of the Registration Agreement is Vietnamese.

As the Complaint was filed in English, the Center, in its notification dated April 13, 2018 (in both English and Vietnamese) invited the Complainant to submit either (i) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English, or (ii) a translation of the Complaint in Vietnamese, or (iii) a substantiated request for English to be the language of the administrative proceedings. On May 4, 2018, the Complainant filed a Vietnamese translation of the Complaint.

The Respondent has not commented on the language of the proceeding.

According to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the 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.

Similar to previous UDRP decisions, the Panel finds that the spirit of paragraph 11(a) is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfortability with each language, the expenses to be incurred and possibility of delay in the proceeding in the event translations are required and other relevant factors (see, e.g., Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679).

In the present case, in consideration of the above circumstances of the proceeding, including, but not limited to:

(i) the nationality of the Parties;

(ii) no request for language of the proceeding or Response (in either English or Vietnamese) has been submitted by the Respondent;

(iii) the fact that the content of website re-directed by the Disputed Domain Name contains numerous words and phrases in English demonstrating that the Respondent is conversant in English;

(iv) English is a popular language in Viet Nam, where the Respondent is located, making it likely to be understandable to the Respondent;

and for the purpose of easy comprehension of the Complainant (the only party actively taking part in the proceeding) of the Panel’s decision without any necessity of translations, and in the interest of fairness to both Parties as well as the Panel’s obligation under paragraph 10(c) of the Rules, which provides that “the Panel shall ensure that the administrative proceeding takes place with due expedition”, the Panel hereby decides, under paragraph 11(a) of the Rules, that the Panel accepts the Complaint and documentation submitted by the Complainant in English and Vietnamese, but shall render its decision in English.

6.2. The Respondent’s Failure to Respond

The Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant (see, e.g., Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn, WIPO Case No. D2010-1413 and M. Corentin Benoit Thiercelin v. CyberDeal, Inc., WIPO Case No. D2010-0941). However, the Panel may draw appropriate inferences from the Respondent’s default.

In accordance with paragraph 4(a) of the Policy, in order to decide on the remedy sought by the Complainant, the Panel will examine whether each of the following three elements is present:

(i) the Disputed Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) the Disputed Domain Name has been registered and is being used in bad faith.

Consequently, the Panel shall further analyze the eventual concurrence of these three grounds in the present case.

A. Identical or Confusingly Similar

The Complainant is required to establish the two following elements: (1) that it has trademark rights, and, if so, (2) that the Disputed Domain Name is identical or confusingly similar to its trademark.

First of all, the Panel finds that the Complainant has clearly evidenced that it has registered trademark rights to MOTUL. Also, the Complainant has demonstrated and evidenced that it had a lengthy use of its trademark for its commercial activities in connection with the lubricants and oil manufacturing and marketing industries, as well as in connection with other products and services worldwide.

Secondly, the Disputed Domain Name comprises the Complainant’s MOTUL mark in which the Complainant has exclusive rights. The difference between the Disputed Domain Name and the trademark is the addition of the prefix “nhot”, which can be written with accent marks as “nhớt” in Vietnamese and means “lubricant” in English. Despite the fact that “nhot” itself has no meaning in English, Vietnamese customers are likely to perceive it as “nhớt” (“lubricant” in English). Thus, the prefix “nhot” should be considered as a descriptive term. The Panel finds that MOTUL remains the dominant element in the Disputed Domain Name. It is well established that the addition of a descriptive terms (such as “nhot”) to a trademark does not prevent confusing similarity, thus, in the Panel’s view, the addition of the said prefix does nothing to distinguish the Disputed Domain Name from the Complainant’s trademark, nor to dispel the confusing similarity, as it was found in previous UDRP decisions (see, e.g., AB Electrolux v. Ilgaz Fatih Micik, WIPO Case No. D2009-0777; Aktiebolaget Electrolux v. ibp, WIPO Case No. D2013-0795; AB Electrolux v. Ong Bui TrungKien, WIPO Case No. D2012-2320).

Thirdly, the Panel finds, similarly to other UDRP panels, that the addition of the generic Top-Level Domain (“gTLD”) “.com” to the Disputed Domain Name does not constitute an element so as to avoid confusing similarity for trademark purposes (see, e.g., Volkswagen AG v. Privacy Protection Services, WIPO Case No. D2012-2066; The Coca-Cola Company v. David Jurkiewicz, WIPO Case No. DME2010-0008; Telecom Personal, S.A. v. NAMEZERO.COM, Inc., WIPO Case No. D2001-0015; F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s MOTUL trademark, and the first element under paragraph 4(a) of the Policy is established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the Disputed Domain Name for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads:

“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 Panel finds that the Complainant has presented sufficient evidence that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent did not reply to the Complainant’s contentions and, therefore, has not refuted the Complainant’s contentions.

Regarding paragraph 4(c)(i) of the Policy, the Panel finds, in light of the Complainant’s asserted facts, that no license, permission or authorization of any kind to use the Complainant’s trademark has been granted to the Respondent. There is no evidence available that the Respondent holds any registered or unregistered trademark rights. Thus, the Panel finds that the Respondent has no rights in the trademark MOTUL.

Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have rights or legitimate interests in the domain name if its use meets certain requirements, which are described in the decision Oki Data Americas, Inc. v. ASD, Inc, WIPO Case No. D2001-0903 (“Oki Data”), including:

- the respondent must actually be offering the goods or services at issue;

- the respondent must use the site to sell only the trademarked goods (otherwise, there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods);

- the site itself must accurately disclose the respondent’s relationship with the trademark owner; and

- the respondent must not try to “corner the market” in all relevant domain names, thus depriving the trademark owner of the ability to reflect its own mark in a domain name.

In this particular case, the Panel finds that the Respondent does not fulfill the Oki Data criteria.

On the date of this Decision, the Panel accessed Disputed Domain Name and found that the Disputed Domain Name is re-directed to an active website under the domain name <nhotmotul.vn> used for promoting a company named “Công ty TNHH Truyền Thông Số” (English name: “Digital Media Company Limited”), which offers the Complainant’s products, such as lubricants and oil, for sale. However, on such website, the Panel finds that although selling MOTUL lubricants and oil, the Respondent did not place anywhere in the website any statement or disclaimer disclosing the lack of relationship with the Complainant but a misleading statement (as texts in a scrolling image on the front page of such website) that it is “Chuyên dầu nhớt Motul chính hãng” (English translation: “Specialized in genuine Motul lubricants and oil”), which may be further evidence of the Respondent’s intention to create an impression that the Respondent is somehow in association with the Complainant. In addition, on such website, the Respondent also adds a copyright text “Copyright ©2018 Nhớt Motul. All rights reserved”, which creates an impression that it has rights in the name “Motul” or “Nhớt Motul” when no such rights exist.

Further, the use of the Complainant’s logo-typed trademark on the website re-directed by the Disputed Domain Name may be further evidence of the Respondent’s intention to create an impression that the Respondent is the Complainant or a false association with the Complainant.

For all the foregoing reasons, the Panel finds the Respondent’s unauthorized use of the Disputed Domain Name wholly incorporating the Complainant’s MOTUL trademarks does not meet the Oki Data criteria to be considered to be a bona fide offering of goods or services.

Regarding paragraphs 4(c)(ii) and 4(c)(iii) of the Policy, the Panel finds that there is no evidence that would suggest that the Respondent, as an individual, business, or other organization, has been commonly known by the Disputed Domain Name.

The Panel further finds that no evidence has been presented that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name. In fact, as it appears following the Complainant’s assertions and evidence with regard to the Respondent’s registration of the Disputed Domain Name, the Respondent had full knowledge of the Complainant’s trademark and had an intention to gain profit by riding on the good reputation of the Complainant.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The second element under paragraph 4(a) of the Policy is established.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy reads:

“For the purposes of paragraph 4(a)(iii), 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 you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

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

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

Each of the four circumstances in paragraph 4(b) of the Policy, if found, is evidence of “registration and use of a domain name in bad faith”.

The Panel finds that the Complainant has put forth sufficient evidence that the Respondent has registered and used the Disputed Domain Name in bad faith.

The Panel further finds that the Complainant’s trademark MOTUL has been registered throughout the world, and enjoys significant reputation. The Complainant’s trademark has been registered and used for decades in, among others, Viet Nam where the Respondent resides.

The Complainant also owns and operates the websites at the domain names <motul.com>, <motul.vn>, <motul.com.vn>, to which the Disputed Domain Name is identical, except for the addition of the descriptive word “nhot”, which is a Vietnamese word for “lubricant”. The phrase “nhotmotul” describes exactly one of the businesses that the Complainant is involved in.

Given the fact that the Complainant’s MOTUL trademark, which is a coined word, without any dictionary meaning, is not descriptive of anything and devoid of meaning other than the products and services of the Complainant, it is very unlikely that the Respondent would have registered the Disputed Domain Name incorporating the trademark without knowledge of the trademark (see also Hoffmann-La Roche Inc. v. Hightech Industries, Andrew Browne, WIPO Case No. D2010-0240; Volkswagen AG v. Swiss Recruitment, WIPO Case No. D2013-0534) and that it defies common sense to believe that the Respondent coincidentally selected this precise domain name without any knowledge of the Complainant and its trademark (see also Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415; Volkswagen AG v. Swiss Recruitment, supra).

Therefore, the Panel agrees with the Complainant’s contention on the Respondent’s knowledge of the Complainant’s trademark before its registration of the Disputed Domain Name. These facts show that the Respondent did not register the Disputed Domain Name in a fortuity. The Respondent knew the Complainant and the Complainant’s trademark MOTUL and the domain name <motul.com> before its registration of the Disputed Domain Name, and the Panel considers the registration of the Disputed Domain Name as an attempt by the Respondent as to take advantage of the Complainant’s goodwill.

The Panel finds that, similar to numerous previous UDRP panels, the use of the Complainant’s mark to attract visitors to such a for-profit site constitutes bad faith (see, e.g., Pfizer Inc. v. Fizer Inc., WIPO Case No. D2005-0285).

At the date of this Decision, in addition to the adoption of the famous MOTUL mark in the Disputed Domain Name, the Respondent also uses the Complainant’s logo-typed trademark on the website re-directed by the Disputed Domain Name, but does not disclose its actual relationship with the Complainant at that website. As such, any access to the website re-directed by the Disputed Domain Name would inevitably lead Internet users to a likelihood of confusion with the Complainant’s MOTUL trademark as to the source, sponsorship, affiliation, or endorsement of the website, or any relation or association between the Complainant and the Respondent, where such relation or association does not exist. Therefore, the Panel finds that the Respondent used the Disputed Domain Name to take a free ride on the Complainant’s well-known mark MOTUL.

Further, the Panel finds that in addition to the adoption of the Complainant’s well-known trademark as a distinctive part in the Disputed Domain Name, the Respondent placed a statement and a copyright text on a misleading relationship with the Complainant as above-mentioned. Therefore, the Panel finds that the Respondent intentionally used the Disputed Domain Name to mislead consumers into believing that the website under the Disputed Domain Name is in somehow associated, fostered or recommended by the Complainant.

In addition, as mentioned in section B above, it is evidenced that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name.

Therefore, the Panel upholds that the Respondent is using the Disputed Domain Name to capitalize on the Complainant’s trademark by intentionally attempting to attract Internet users to its commercial website through the creation of a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of its website, for commercial gain.

Taking into account all of the above, the Panel finds that the Disputed Domain Name was registered and is being used by the Respondent in bad faith under paragraph 4(b)(iv) of the Policy, and that the third element under paragraph 4(a) of the Policy is established.

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 <nhotmotul.com> be transferred to the Complainant.

Pham Nghiem Xuan Bac
Sole Panelist
Date: June 28, 2018