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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Motul v. Lars Weber, Momentum Invest Corp Pte Ltd

Case No. D2019-2309

1. The Parties

The Complainant is Motul, France, represented by Ordipat, France.

The Respondent is Lars Weber, Momentum Invest Corp Pte Ltd, Singapore, self represented.

2. The Domain Name and Registrar

The disputed domain name <motul-servicepartner.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 23, 2019. On September 23, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 24, 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 October 4, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 24, 2019. The Respondent requested by email on October 23, 2019 a 14-day extension to file a response. The Centre granted on the same day a four-day extension under paragraph 5(b) of the Rules, therefore extending the response due date to October 28, 2019. On October 24, 2019, the Center received an email communication from the Complainant objecting to the Respondent’s 14-day extension request. On October 25, 2019, the Center confirmed that the Response due date was October 28, 2019. The Respondent did not file a formal Response with the Center by the due date, however the Respondent sent an email communication on October 27, 2019. Both Parties sent various emails to the Center after the due date for the Respondent’s response. On October 30, 2019, the Center informed the Parties that it would proceed with panel appointment.

The Center appointed Alistair Payne as the sole panelist in this matter on November 7, 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 Complainant is a French public company that has operated for more than 160 years in the oil and lubricants sector. It sells its products in more than 100 countries and is specialized in the automotive market and industrial field. The Complainant owns more than 144 trade mark registrations incorporating the word MOTUL including in particular French trade mark registration 1712391 for the word mark MOTUL registered on December 17, 1991. It also owns approximately 400 domain names incorporating the word or mark MOTUL including <motul.com>.

The disputed domain name was registered on July 12, 2018. The disputed domain name resolves to the Registrar’s holding page.

5. Parties’ Contentions

A. Complainant

The Complainant submits that it owns registered trade mark rights as set out above. It says that the disputed domain name incorporates its MOTUL trade mark and adds a hyphen followed by the expression “servicepartner”. The Complainant submits that this is enough to find confusing similarity under the Policy and that the addition of this expression, rather than helping to avoid any risk of confusion, in fact exacerbates the risk by suggesting that the disputed domain name refers to the Complainant’s partners.

The Complainant says that the Respondent has neither rights nor legitimate interests in respect of the disputed domain name, that the Respondent has not registered MOTUL (which it notes is a distinctive coined term) anywhere in the world and that the Respondent has never been authorised or licensed or otherwise permitted by the Complainant to use the Complainant’s trade marks or to register the disputed domain name. The Complainant further says that considering the longstanding reputation attaching to its MOTUL mark, as described further below, that the Respondent must have know of its mark when it registered the disputed domain name and as a result has no rights or legitimate interests in it.

The Complainant submits that it has used its MOTUL mark for more than a century, has been very active in promoting the mark internationally through sports sponsorships and advertising campaigns and press releases and that its substantial reputation has been recognized by past panels in various UDRP cases. Further, the Complainant notes that the Respondent’s representative, Mr Lars Weber, has worked for the Complainant’s competitor (also specialized in motor vehicles, oils and lubricants), Liqui Moly for many years and appears to be the managing director of a Liqui Moly Indonesian subsidiary based on Mr Weber’s LinkedIn profile. It says that Mr Weber has registered the disputed domain name by using his former employer’s (the name of the Registrant Organization according to the WhoIs record) in spite of the fact that he is currently employed by Liqui Molly. It submits that by registering a domain name that contains his competitor’s trade mark, the Respondent must have known of the Complainant’s MOTUL name and mark and is trying to disrupt the business of his competitor, in terms of paragraph 4(b)(iii) of the Policy.

The Complainant also notes that the disputed domain name resolves to the Registrar’s holding page. It says that this amounts to a passive holding of the disputed domain name in bad faith and that the various factors that have been found to be relevant under the Policy in making a finding of passive holding are present in this case. In particular, it says that its MOTUL mark is well known and highly distinctive, the Respondent works for one of the Complainant’s competitors, has not been authorised to use the mark and that it is implausible for him to demonstrate any good faith use of the mark in circumstances that he must have been aware of the Complainant’s use of the mark which predates the registration of the disputed domain name by many years and is in no way a common or generic name and that a simple Google search would in any event have demonstrated the Complainant’s interest.

B. Respondent

The Respondent did not file a formal Complaint by the due date but did provide comments in its emails of October 23 and 27, 2019 which are in the record. In the email of October 23, 2019, Mr Lars Weber as Managing Director of Momentum Invest Corp Pte Ltd said that he had not registered the disputed domain name in bad faith or otherwise to harm the Complainant, but that he did not see why the disputed domain name was essential to the Complainant. He said that Liqui Moly was operating a service under the domain name <liquimoly-servicepartner.com> and that this service was very successfull and that the Respondent had sought to protect its uniqueness. As a result Mr Weber said that the Respondent had purchased the disputed domain name in order to prevent others from using the term “service partner”, however in the event that the Complainant wanted it to be transferred then he was prepared to discuss that possibility.

In the email of October 27, 2019, the Respondent noted as follows before offering the Complainant with three options for settlement of the matter:

“And considering that these 4000+ active accounts produce millions in revenue as Liqui Moly ServicePartners we have considered to provide 3 options. The main intention for the given options is to prevent that these over 4000 automotive workshops which are currently found and listed as "Liqui Moly ServicePartners" across south-east Asia, begin to overlap in listings on a similar sounding domain that ends with "servicepartner". a handing over of a domain shall not result into a situation where these liquimoly-servicepartners start showing under the terminology Motul-Servicepartner. Such result would be very confusing to consumers in the respective markets. Hence, we aim to find a different amicable scenario.”

The three options offered by the Respondent included an agreement for the disputed domain name to remain dormant, transfer of ownership of the disputed domain name with competitive restrictions and transfer of the disputed domain name outright for a consideration of EUR 47,000.

6. Discussion and Findings

The Panel will admit the Respondent’s emails of October 23 and 27, 2019 as the response, but sees no reason to admit the emails sent by either party to the Center after the extended due date for the Response, October 28, 2019.

A. Identical or Confusingly Similar

The Complainant has demonstrated that it owns various registered trade mark rights for its MOTUL mark and in particular French trade mark registration 1712391 for the word mark MOTUL registered on December 17, 1991. The disputed domain name wholly incorporates the Complainant’s MOTUL mark and is therefore confusingly similar under the first element of the Policy to the Complainant’s registered trade mark right. The Panel considers that the addition of “-servicepartner” before the Top-Level Domain “.com” does not prevent a finding of confusing similarity. As a result, the Complaint succeeds under the first element of the Policy.

B. Rights or Legitimate Interests

The Complainant has submitted that the Respondent has not registered MOTUL (which it notes is a distinctive coined term) anywhere in the world and that the Respondent has never been authorised or licensed or otherwise permitted by the Complainant to use the Complainant’s trade marks or to register the disputed domain name. The Complainant has further submitted that considering the longstanding reputation attaching to its MOTUL mark, the fact that Mr Weber who signs himself as the Managing Director of the Respondent and is also employed as the Managing Director of a Liqui Moly subsidiary which is a competitor of the Complainant and that Mr Weber and/ or the Respondent must have known of the Complainant’s MOTUL mark when the disputed domain name was registered, it is apparent that the Respondent’s intentions are not bona fide or legitimate.

The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. Mr Weber, presenting himself as the Managing Director of the Respondent asserted in his email of October 23, 2019 that Liqui Moly owns <liquimoly-servicepartner.com> and that the disputed domain name was acquired because it included the term “service partner” and in order “to prevent to close a similarity to[…]” the service provided at “www.liquimoly-servicepartner.com”. In his email of October 27, 2019 Mr Weber implied that the disputed domain name was registered to prevent the Complainant from using it in relation to a competing service. To this Panel it seems implicit in Mr Weber’s emails that the Respondent is not purporting to have any interest in the MOTUL mark but acquired the disputed domain name in order to prevent the Complainant from launching a similar business under the disputed domain name.

The Panel notes that the distinctive element in the disputed domain name is the word “motul”. The expression “service partner” is by contrast a quite common expression in English that lacks inherent distinctiveness. Mr Weber appears to have admitted that the Respondent’s interest was to acquire the disputed domain name that included the Complainant’s mark in an effort to prevent the Complainant from setting up a competing business to the Respondent’s “Liqui Moly service partner” business. This is not bona fide or legitimate conduct and the Panel finds that the Respondent has not therefore rebutted the prima facie case made out by the Complainant. As a result, the Complaint also succeeds under this element of the Policy.

C. Registered and Used in Bad Faith

The disputed domain name was registered in 2018 many years after the registration of the Complainant’s French trade mark registration and more than 150 years after the Complainant first commenced its business. Based on Mr Weber’s email it is quite apparent that he as an employee of Liqui Moly and the Managing Director of the Respondent and is very well aware of the Complainant and of its MOTUL mark and business as a key competitor to the Liqui Moly business. As a result the Panel has no hesitation in finding that the Respondent was well aware of the Complainant’s mark when the disputed domain name was registered and that it did so with knowledge.

The disputed domain name resolves to the Registrar’s holding page and is being held passively by the Respondent. The factors that UDRP panels have previously considered to amount to a passive holding in bad faith are set out at section 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) and include: (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.

In this case the MOTUL mark is highly distinctive and enjoys a significant reputation in France and in the oil and lubricants sector. Mr Weber’s emails on behalf of the Respondent imply that the disputed domain name was registered in order to prevent the Complainant from operating its own “service partner” business. Based on the emails of October 23 and 27, 2019, Mr Weber did not appear to be concerned that the Respondent was registering a domain name that contained the Complainant’s registered and highly distinctive trade mark and when approached by the Complainant Mr Weber seemed not to understand why the Complainant was concerned. He did not offer to have the Respondent immediately transfer the disputed domain name to the Complainant, but rather offered to “enter into discussions” with the Complainant, which indicated the negotiation of conditions of transfer, including a financial element more than just the out of pocket costs incurred by the Respondent for registration. There was no suggestion in Mr Weber’s emails that the Respondent had some other plausible good faith reason for registering the disputed domain name. In these circumstances the Panel finds that Respondent both registered the disputed domain name with knowledge and in bad faith and subsequently held the disputed domain name passively and in bad faith.

In addition, according to Mr Weber’s email of October 27, 2019, he acquired the disputed domain name for the purpose of trying to restrict the Complainant from competing with it while using the disputed domain name, or by extracting the substantial sum of EUR 47,000 from the Complainant in exchange for an outright transfer of the disputed domain name. In the Panel’s view this conduct fulfils the requirements of paragraph 4(b)(iii) of the Policy, namely that the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor. It is also indicative of the Respondent’s bad faith, in that the Respondent sought not only to prevent the Complainant from trading competitively under the disputed domain name that incorporated the Complainant’s mark, but was prepared to transfer it to the Complainant at a very inflated price over and above the Respondent’s out-of-pocket costs.

For these reasons the Panel finds that the Respondent has both registered and used the disputed domain name in bad faith and that the Complaint also succeeds under this element of the Policy.

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 <motul-servicepartner.com> be transferred to the Complainant.

Alistair Payne
Sole Panelist
Date: 21 November 2019

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