WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Valvoline Licensing and Intellectual Property LLC v. jau Khan
Case No. D2018-1486
1. The Parties
Complainant is Valvoline Licensing and Intellectual Property LLC of Lexington, Kentucky, United States of America ("United States"), represented by CSC Digital Brand Services Group AB, Sweden.
Respondent is jau Khan of Kuala Lumpur, Malaysia.
2. The Domain Name and Registrar
The disputed domain name <valvolinecarcam.com> is registered with TurnCommerce, Inc. DBA NameBright.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 4, 2018. On July 4, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 5, 2018, the Registrar transmitted by email to the Center its verification response confirming that Respondent 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 11, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 31, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on August 1, 2018.
The Center appointed Felipe Claro as the sole panelist in this matter on August 14, 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
1. Complainant, Valvoline Licensing and Intellectual Property LLC, is the owner of trademark registrations across various jurisdictions including the United States of America (since May 29, 1906, registration no. 53237) and the European Union (since October 25, 2011, registration no. 009847773) for the wordmark VALVOLINE. Further, Complainant is the owner of the currently live trademark application at the United States Patents and Trademarks Office (USPTO) VALVOLINE CARCAM (App. No. 87699121), filed on November 28, 2017, that is, 4 days before the registration of the disputed domain name. None of these applications or registrations have been abandoned, cancelled, or revoked.
2. Complainant also has an internet presence through its primary website at <valvoline.com> (since March 4, 1995) as well as its various social media platforms including Facebook, Twitter, and Instagram.
3. Respondent registered <valvolinecarcam.com> on December 2, 2017, more than 23 years after the registration of <valvoline.com> and 112 years after the first registration of the VALVOLINE trademark.
4. The disputed domain name does not currently resolve to an active website.
5. Complainant sent two different cease and desist letters to Respondent dated May 3 and 14, 2018, respectively. On May 23, 2018, Respondent offered to transfer the disputed domain name in exchange of USD 1,200. After the Complainant refused to accept the offer, Respondent later offered USD 1,000 on June 1, 2018.
5. Parties' Contentions
1. 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, Complainant is known as a leading worldwide producer and distributor of premium branded automotive, commercial and industrial lubricants, and automotive chemicals.
2. In the United States, 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.
3. Complainant also has a strong Internet presence through its primary website at <valvoline.com> as well as its various social media platforms including Facebook, Twitter, and Instagram. According to "www.similarweb.com", Complainant's website located at its primary domain name <valvoline.com> received over 590,000 total visits during a six-month period ranging from December 2017 to May 2018. Further, according to "www.alexa.com" <valvoline.com> has a global ranking of 132,346 and ranks 31,909 in the United States.
4. Complainant owns and has obtained numerous trademark registrations for its VALVOLINE trademark. Complainant also currently holds a live VALVOLINE CARCAM trademark application the USPTO. None of these applications or registrations have been abandoned, cancelled, or revoked.
5. Complainant has made significant investments over the years to advertise, promote, and protect Complainant's trademark through various forms of media, including the Internet. Based on its extensive use and trademark registrations, Complainant owns the exclusive right to use the VALVOLINE marks.
6. The VALVOLINE trademarks, the VALVOLINE CARCAM trademark application and the <valvoline.com> domain name all exist before the disputed domain name.
7. The disputed domain name consists solely of Complainant's VALVOLINE CARCAM trademark application, resulting in a domain name that is identical to the Complainant's VALVOLINE CARCAM trademark application. Regardless of Complainant's pending trademark application for its VALVOLINE CARCAM mark with the USPTO, the Disputed Domain Name is still confusingly similar to Complainant's VALVOLINE trademark. It is confusingly similar to VALVOLINE.
8. In 2017, Complainant launched Valvoline CarCam that allows customers to see what is happening while their vehicle is serviced and they remain in their car. A monitor shows live views of technicians working both under the hood and below the vehicle, a timer indicating how long service has lasted, promotions and more. The system is being rolled out to all of Complainant's service centers.
9. Complainant is very well known by its VALVOLINE trademark. Respondent is not commonly known by the disputed domain name and does not use it, lacking a legitimate interest. Furthermore, Complainant has not licensed, authorized, or permitted Respondent to register domain names incorporating Complainant's trademark.
10. Respondent's purpose is to create the impression that the disputed domain name is one that is authorized and administered by Complainant. It is not currently using the disputed domain name.
11. Respondent attempted to obtain money in exchange for the disputed domain name rights in a clear example of bad faith.
12. There is evidence of prior UDRP decisions in which domain names have been transferred away from Respondent to complaining parties. This supports a finding that Respondent has engaged in a bad faith pattern of "cybersquatting".
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
In view of the lack of a suitable response filed by Respondent as provided for under paragraph 5 of the Rules, this proceeding has proceeded by way of default. Hence, under paragraphs 5(e), 14(a) and 15(a) of the Rules, the Panel is directed to decide this administrative proceeding based on Complainants' undisputed representations. In that regard and apart from judging this proceeding through mere default of Respondent, the Panel makes the following specific findings.
A. Identical or Confusingly Similar
1. Complainant has several registered marks under the mark VALVOLINE and the trademark application VALVOLINE CARCAM. Without even considering the application, which is pending, for purposes of a proper comparison with the disputed domain name, the extension ".com" is excluded and the segment "valvolinecarcam" is compared to VALVOLINE. As a result of this comparison, the only difference between both is the element "carcam". In creating the disputed domain name, Respondent merely added the generic, descriptive term "carcam" to Complainant's VALVOLINE trademark. Past panels have consistently held that a disputed domain name that consists merely of a complainant's trademark and an additional term that closely relates to and describes that complainant's business is confusingly similar to that complainant's trademarks. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") at 1.8 ("Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element").
2. Accordingly, the disputed domain name is confusingly similar to the VALVOLINE trademark.
B. Rights or Legitimate Interests
1. The VALVOLINE trademarks, the VALVOLINE CARCAM trademark application and the <valvoline.com> domain name all existed a long time before the registration of the disputed domain name and Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized Respondent to register or use the VALVOLINE trademark in any manner. Sportswear Company S.P.A. v. Tang Hong, WIPO Case No. D2014-1875 ("In the absence of any license or permission from the Complainant to use its trademark, no actual or contemplated bona fide or legitimate use of the Disputed Domain Name could reasonably be claimed").
2. Respondent is not commonly known by the disputed domain name, which evinces a lack of rights or legitimate interests. In this case, the pertinent WhoIs information identifies the Registrant as "jau Khan", which does not resemble the disputed domain name in any manner. Thus, where no evidence suggests that Respondent is commonly known by the disputed domain name, then Respondent cannot be regarded as having acquired rights to or legitimate interests in the disputed domain name as per paragraph 4(c)(ii) of the Policy. Moncler S.p.A. v. Bestinfo, WIPO Case No. D2004-1049 (here the panel noted "that the Respondent's name is 'Bestinfo' and that it can therefore not be "commonly known by the Domain Name [moncler.com]").
3. Respondent is using the disputed domain name to redirect Internet users to a website that resolves to page that lacks content. Respondent has failed to make use of this disputed domain name's website and has not demonstrated any attempt to make legitimate use of the domain name and website, which evinces a lack of rights or legitimate interests in the disputed domain name, as confirmed by numerous past panels. Washington Mutual, Inc. v. Ashley Khong, WIPO Case No. D2005-0740 ("'Parking' a domain name which then points to its registrar's Web site services does not constitute a bona fide offer of goods or services as required by the Policy paragraph 4(c)(i)"). Further, Respondent's immediate request for money, as it will be seen in section C below, supplements a general idea of lack of legitimate interests.
4. Accordingly, Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
1. Respondent's registration of the disputed domain name was only a couple of days after Complainant filed its trademark application for its VALVOLINE CARCAM mark with the USPTO, and in the same year Complainant launched its VALVOLINE CARCAM services to the public. These facts strongly suggest that Respondent knew of Complainant and only registered the disputed domain name in response to the publicity generated and received by Complainant. Previous panels have held that registration of a domain name related to and shortly after an announcement or event by Complainant constitutes opportunistic bad faith registration. Mr. Severiano Ballesteros Sota, Fairway, S.A. and Amen Corner, S.A. v. Patrick Waldron, WIPO Case No. D2001-0351 (finding that the respondent's registration of the <seveballesterostrophy.com> domain name at the time of the announcement of the Seve Ballesteros Trophy golf tournament "strongly indicates an opportunistic registration")
2. Evidence of prior panel decisions in which domain names have been transferred away from Respondent to complaining parties supports a finding that Respondent has engaged in a bad faith pattern of "cybersquatting". Here, the trademark VALVOLINE was in use before the registration of the disputed domain name and the trademark application for VALVOLINE CARCAM had been filed before the registration of the disputed domain name. Arai Helmet Americas, Inc. v. Goldmark, WIPO Case No. D2004-1028 (finding that "Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it" and taking notice of another UDRP proceeding against the respondent to find that "this is part of a pattern of such registrations").
3. The fact that Respondent offered to sell the disputed domain name to Complainant for at least USD 1,000, Respondent has demonstrated an intent to sell, rent, or otherwise transfer the disputed domain name for a valuable consideration in excess of his out-of-pocket expenses, which constitutes bad faith under Policy paragraph 4(b)(i). It is well established that seeking to profit from the sale of a confusingly similar domain name that incorporates a third party's trademark demonstrates bad faith. Groupe Auchan v. Bui Tan Dat / Domain ID Shield Service Co., Limited, WIPO Case No. D2014-1935 ("The Panel cannot find any justification for the registration and use of the disputed domain name in such circumstances except to find that the Respondent registered and is using the disputed domain name for the purpose of selling the disputed domain name for valuable consideration in excess of the Respondent's documented out-of-pocket costs and/or to disrupt the Complainant's business"). Caldsoft Way3D Sistemas Eireli EPP v. JInsoo Yoon, WIPO Case No. D2016-2514 (finding bad faith where the registrant "simply offers the disputed domain name for sale").
4. The disputed domain name currently resolves to an inactive site and is not being used, though past panels have noted that bad faith use in the context of paragraph 4(a)(iii) does not require a positive act on the part of the respondent – instead, passively holding a domain name can constitute a factor in finding bad faith registration and use pursuant to Policy paragraph 4(a)(iii). WIPO Overview 3.0 at section 3.3 ("From the inception of the UDRP, panelists have found that 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"). DCI S.A. v. Link Commercial Corporation, WIPO Case No. D2000-1232 (concluding that the respondent's passive holding of the domain name satisfies the requirement of paragraph 4(a)(iii) of the Policy).
5. Based on the balance of the facts set forth above, particularly the history and latitude of the trademark, it is more likely than not that Respondent knew of and targeted Complainant's trademark, and Respondent should be found to have registered and used the disputed domain name in bad faith. Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., WIPO Case No. D2014-1754 ("the Panel makes its finding regarding bad faith registration by asking whether it is more likely than not from the record of the evidence in the proceeding that Respondent had the ELECTRIC FOOTBALL trademark in mind when registering the Domain Name"). Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 ("It is also not possible to conceive of a plausible situation in which the Respondent would have been unaware of" the complainant's brands at the time the disputed domain name was registered.)
6. Accordingly, Respondent has registered and used the disputed domain name in bad faith.
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 <valvolinecarcam.com> be transferred to Complainant.
Date: August 27, 2018