WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Valvoline Licensing and Intellectual Property LLC v. Cimpress Schweiz GmbH, Cimpress Schweiz GmbH
Case No. D2018-1488
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 Cimpress Schweiz GmbH, Cimpress Schweiz GmbH of Zurich, Switzerland.
2. The Domain Name and Registrar
The disputed domain name <valvolina.com> is registered with Tucows Inc. (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 4, 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 10, 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 (since May 29, 1906, registration no. 0053237), Switzerland (since January 6, 1977, registration no. 3P-286113) and the European Union (since October 25, 2011, registration no. 009847773) for the wordmark VALVOLINE. None of these 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 <valvolina.com> on February 27, 2018, 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 three different cease and desist letters to Respondent dated March 14, 26 and April 5, 2018, respectively.
6. Pretending to work for the brand VALVOLINE and using the email address "[…]@valvolina.com", which unequivocally belongs to Respondent, an employee that works for the VALVOLINE brand was contacted on February 27 and 28, 2018 and was asked to do a wire transfer.
7. Complainant recently prevailed in the following case related to the <valvolinecup.com> domain name: Valvoline Licensing and Intellectual Property LLC v. Andrei Arhipov,
WIPO Case No.
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 "Similarweb.com", Complainant's website located at its primary domain name <valvoline.com> received 3.03 million total visits during a six-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.
4. Complainant owns and has obtained numerous trademark registrations for its VALVOLINE trademark. None of these 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. Both the VALVOLINE trademarks and the <valvoline.com> domain name exist before the disputed domain name.
7. The disputed domain name is a purposeful misspelling of Complainant's VALVOLINE trademark and must be considered confusingly similar to Complainant's trademark and prototypical example of typosquatting. It is confusingly similar to VALVOLINE.
8. The term "valvolina" is related to Complainant's business. More specifically, to celebrate its 150th anniversary in 2016, Complainant had launched an online mini-series called "Valvolina: Collector's Cup" and hired expert picker and motor oil icon Frank Fritz to lead Internet users to participate in looking for historic memorabilia and iconic pieces which described Complainant's history.
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. Further, Respondent's purpose is to fool unsuspecting email recipients into divulging their personal information by impersonating as Complainant's executive to send emails to attempt to solicit sensitive financial information.
11. Respondent attempted to pass off as Complainant's Chief Financial Officer (CFO) to solicit payment from Complainant's Finance Director in China. Respondent has found information about its executives on the internet and used such information for this phishing scheme. Respondent sent emails by posing as Complainant's top executive. Respondent's efforts to masquerade as Complainant's executive staff in an attempt to solicit sensitive, financial information from other unsuspecting employees constitute fraud, which must be considered bad faith registration and use of the disputed domain name.
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 name VALVOLINE. For purposes of a proper comparison with the disputed domain name, the extension ".com" is excluded and the segment "valvolina" is compared to VALVOLINE. As a result of this comparison, the only difference between both is the replacement of an "e" with an "a". Moreover, as the disputed domain name differs from Complainant's trademark by just one final letter, it is highly likely that it looks to take advantage of internet users that inadvertently type an incorrect address when seeking to access the trademark owner's website. Accordingly, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") section 1.9 states that "A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element."
2. Further, the test under the first element typically involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. Where at least a dominant feature of the relevant mark is recognizable in the disputed domain name, as is the case here since the only difference between the two is one letter, the domain name will normally be considered confusingly similar to that mark for purposes of the Policy. See section 1.7 of the WIPO Overview 3.0.
3. Accordingly, the disputed domain name is confusingly similar to the VALVOLINE trademark.
B. Rights or Legitimate Interests
1. Both the VALVOLINE trademarks 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 the instant case, the pertinent WhoIs information identifies the Registrant as "Cimpress Schweiz GmbH", 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 or legitimate interests in the disputed domain name as per paragraph 4(c). 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. The disputed domain name resolves to a blank page which 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 disputed domain name and website, which evinces a lack of rights or legitimate interests in the disputed domain name, as confirmed by numerous past UDRP 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).)
4. As it will be further explained in letter C. below, the use of the disputed domain name, presumably for fraud clearly fails to constitute a bona fide offering of goods or services pursuant to Policy paragraph 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy paragraph 4(c)(iii). WIPO Overview 3.0 section 2.13.1: ("Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud can never confer rights or legitimate interests on a respondent.") Respondent attempted to pass off as Complainant's Chief Financial Officer (CFO) to solicit payment from Complainant's Finance Director in China. Complainant believes that Respondent has found information about its executives on the Internet and used such information for this phishing scheme. By sending emails from the disputed domain name, Respondent is attempting to pass itself off as Complainant, which provides additional evidence of Respondent's lack of rights or legitimate interests in the disputed domain name. See Syngenta Participations AG v. Guillaume Texier, Gobain ltd, WIPO Case No. D2017-1147 ("A registrant cannot acquire rights or legitimate interests by the use of a domain name as an email address from which to send phishing emails.")
5. Accordingly, Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
1. Respondent is using the disputed domain name to attempt to pass off as Complainant's top executive to solicit financial information from Complainant's employees as part of an email phishing scheme. Respondent sent emails by posing as Complainant's top executive. Respondent's efforts to masquerade as Complainant's executive staff in an attempt to solicit sensitive, financial information from other unsuspecting employees certainly constitute fraud for the purposes of the Policy, which must be considered bad faith registration and use of the disputed domain name. WIPO Overview 3.0 section 3.4("Panels have held that the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending email, phishing, identity theft, or malware distribution.") Minerva S.A. v. Whoisguard Protected, Whoisguard, Inc. / Greyhat Services, WIPO Case No. D2016-0385 (finding that the disputed domain name was registered and used in bad faith by sending fraudulent emails in an attempt to create a likelihood of confusion between it and the Complainant.)
2. Respondent has been recently engaged in a bad faith pattern of "cybersquatting." Respondent has previously been involved in several UDRP cases, including the below-listed recent cases, which provides evidence of the pattern of cybersquatting in which Respondent is engaging:
- Sanofi / Genzyme Corporation v. Cimpress Schweiz GmbH, WIPO Case No. D2018-0296
- Indivior UK Limited v. Cimpress Schweiz GmbH, WIPO Case No. D2018-0421
- Lanxess Deutschland GmbH v. Cimpress Schweiz GmbH, WIPO Case No. D2018-0506
3. The disputed domain name is a slight misspelling of Complainant's VALVOLINE trademark, as well as its <valvoline.com> domain name and it is likely it has intentionally been designed to closely mimic them. This is usually done in order to capitalize on typing errors committed by Complainant's customers in trying to locate Complainant on the internet. Numerous UDRP panels have found that registering a domain name to take advantage of traffic generated by typing errors committed by another's customers, as here, is evidence of bad faith registration and use pursuant to Policy paragraph 4(a)(iii). WIPO Overview 3.0 section 3.1.4("Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith.") Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415 ("it defies common sense to believe that Respondent coincidentally selected the precise domain without any knowledge of Complainant and its trademarks.")
4. Further, as shown by Complainant, the term "valvolina" is related to Complainant's business. More specifically, to celebrate its 150th anniversary in 2016, Complainant had launched an online
mini-series called "Valvolina: Collector's Cup". Therefore, the fact that the disputed domain name do not only closely resembles Complainant's VALVOLINE trademark, but it is also in itself a term which relates to Complainant's business further increases the likelihood of confusion between the disputed domain name and Complainant's VALVOLINE trademark.
5. Respondent has ignored Complainant's attempts to resolve this dispute outside of this administrative proceeding by refusing to answer the cease-and-desist letters. Past UDRP panels have held that failure to respond to a cease-and-desist letter may properly be considered a factor in finding bad faith. Encyclopedia Britannica v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party, WIPO Case No. D2000-0330 (failure to positively respond to a demand letter provides "strong support for a determination of 'bad faith' registration and use"). RRI Financial, Inc., v. Chen, WIPO Case No. D2001-1242 (finding bad faith where "The Complainant alleges that it sent numerous cease and desist letters to [r]espondent without receiving a response").
6. 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.").
7. Accordingly, Respondent has registered and is using 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 <valvolina.com> be transferred to Complainant.
Date: August 24, 2018