WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Valvoline Licensing and Intellectual Property LLC v. Baba Bigchief
Case No. D2019-0820
1. The Parties
The Complainant is Valvoline Licensing and Intellectual Property LLC, United States of America, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Baba Bigchief, Nigeria.
2. The Domain Name and Registrar
The disputed domain name, <valvolines.com> (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 April 10, 2019. On April 10, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 12, 2019, 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.
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 of the Complaint, and the proceedings commenced on April 26, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 16, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 20, 2019.
The Center appointed Tony Willoughby as the sole panelist in this matter on June 11, 2019. 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 group of companies of which the Complainant is a member was a pioneer in the automotive lubricant field. The Complainant’s parent company, Valvoline Inc., was founded over 150 years ago and has been using the VALVOLINE trade mark ever since. The Complainant is the registered proprietor of the group’s VALVOLINE trade mark registrations, which include United States Trademark Registration No. 0053237 VALVOLINE (typed drawing) registered May 29, 1906 (application filed April 14, 1905) in class 4 for lubricating oils.
The Complainant operates its primary website connected to its <valvoline.com> domain name which it registered on March 4, 1995.
The Domain Name was registered on May 28, 2018. It is not connected to an active website.
On January 14, 2019, January 24, 2019 and February 4, 2019 the Complainant’s representatives sent emails to the Respondent’s registered email address drawing the Respondent’s attention to the Complainant’s trade mark rights and seeking inter alia transfer of the Domain Name. The Respondent failed to reply to any of those emails.
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to the Complainant’s VALVOLINE registered trade mark; that the Respondent has no rights or legitimate interests in respect of the Domain Name; and that the Domain Name has been registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights: and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name: and
(iii) The Domain Name has been registered and is being used in bad faith.
B. Identical or Confusingly Similar
The Domain Name comprises the name “valvolines” and the “.com” generic Top Level Domain identifier. The Complainant’s VALVOLINE trade mark being readily recognizable in the Domain Name, the Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition: “While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”)
C. Rights or Legitimate Interests
The Complainant points to the examples set out in paragraph 4(c) of the Policy of what can constitute rights or legitimate interests in respect of a disputed domain name and contends that none of them is applicable in relation to the Domain Name. The Domain Name is not in use whether commercially or otherwise and the Domain Name bears no obvious relationship to the name of the Respondent.
The Panel finds that the Complainant has made out a prima facie case under this element of the Policy. In other words, the Respondent has a case to answer.
The Respondent has had several opportunities to provide an answer, namely in response to the Complainant’s emails of January 14, 2019, January 24, 2019 and February 4, 2019 and, most recently, in response to the Complaint in this administrative proceeding, but has neglected to provide any response.
The Panel is unable to conceive of any basis upon which the Respondent could be said to have any rights or legitimate interest in respect of the Domain Name and concludes on the balance of probabilities that the Respondent has no satisfactory answer to the Complainant’s contentions.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
D. Registered and Used in Bad Faith
For the Complaint to succeed under this element of the Policy the Complainant must prove to the satisfaction of the Panel that the Respondent both registered the Domain Name in bad faith and has been using the Domain Name in bad faith.
The Complainant not having made any active use of the Domain Name one is left to speculate as to the Respondent’s motives in registering a domain name, which is confusingly similar to the Complainant’s principal trade mark, which has no obvious connection with the Respondent and in respect of which he has made no use. It is a plural version of the Complainant’s trade mark, which may be regarded as an act of “typosquatting” and, as such, indicative of an intent to ride on the back of the Complainant’s trade mark, but not necessarily so.
The fact that the Respondent has not bothered to respond to the Complainant’s contentions is another factor to weigh in the balance.
A further factor to weigh in the balance is the evidence from the Complainant showing that the Respondent is also the registered owner of the domain name, <itt-com.com>, which the Complainant contends is indicative of an attempt to take advantage of the ITT trade mark of ITT Manufacturing Enterprises Inc., and the domain name, <honevwell.com>, another example of “typosquatting”, which the Complainant contends is indicative of an attempt to take advantage of the HONEYWELL trade mark of Honeywell International Inc.. The Complainant contends that registration of the Domain Name is part of a pattern of bad faith registrations of domain names targeting the trade mark of third parties.
In the experience of the Panel, registrants of domain names do not register them for no reason and, taking the above factors together, the Panel is persuaded on the balance of probabilities that the Respondent registered the Domain Name with a view to exploiting the Domain Name in some way to his own advantage on the back of the reputation and goodwill associated with the Complainant’s VALVOLINE trade mark. Were it otherwise the Respondent could so easily have availed himself of the opportunities afforded to him of providing a justification.
While it is true that the Respondent is currently making no active use of the Domain Name, he could do so at any moment and, on the Panel’s findings thus far, it is more likely than not that any such use will be to the Complainant’s disadvantage. On the evidence before him and in the absence of anything from the Respondent, the Panel cannot conceive of any use that the Respondent could make of the Domain Name without unfairly targeting the Complainant’s trade mark rights. As such, this non-use or so-called “passive use” constitutes in the view of the Panel an unjustified threat hanging over the head of the Complainant and, as such, a continuing abusive use of the Domain Name. If his purpose was simply to block the Complainant from registering the Domain Name, paragraph 4(b)(ii) of the Policy would provide an easy answer for the Complainant. However, the Panel doubts that the Complainant would ever have wanted to register the Domain Name and believes it to be more likely that the Respondent is waiting either to use the Domain Name in some way or for an approach from the Complainant for the purchase of it.
The Panel finds that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(a)(iii) 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, <valvolines.com>, be transferred to the Complainant.
Date: June 14, 2019