WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Afton Chemical Corporation v. Contact Privacy Inc. Customer 1245690231 / Jose Varela
Case No. D2019-2656
1. The Parties
The Complainant is Afton Chemical Corporation, United States of America (“United States”), internally represented.
The Respondent is Contact Privacy Inc. Customer 1245690231, Canada / Jose Varela, United States.
2. The Domain Name and Registrar
The disputed domain name <aftomchemical.com> (the “Disputed Domain Name”) is registered with Google LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 29, 2019. On October 30, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 30, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 31, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 31, 2019. A further amendment to the Complaint was received on November 4, 2019.
The Center verified that the Complaint, together with the amended Complaint and amendment to 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 November 5, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 25, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 26, 2019.
The Center appointed Lynda M. Braun as the sole panelist in this matter on December 17, 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 premier global chemical developer and manufacturer of fuel and lubricant additives with offices in 18 countries across Asia, Europe, the Middle East, North America, and South America. The Complainant has developed a worldwide reputation for excellence in connection with its chemical goods and services relating to additives for lubricants and fuels.
The Complainant is the owner of multiple trademarks in the United States, all of which are active, valid, and subsisting, and have been used continuously in the United States in connection with goods and services related to chemical additives, fuels, oils, lubricants, and other industrial fluids since at least as early as July 1, 2004: These include, but are not limited to, AFTON CHEMICAL, United States Registration No. 3,059, 527, registered on February 14, 2006 in international class 35; AFTON CHEMICAL, United States Registration No. 3,121,557, registered on July 25, 2006 in international class 4; AFTON CHEMICAL, United States Registration No. 3,136,572, registered on August 29, 2006 in international class 1; and AFTON CHEMICAL, United States Registration No. 4,350,312, registered on June 11, 2013 in international classes 1 and 4.
In addition to the Complainant’s United States trademarks listed above, the Complainant owns numerous trademark registrations in Argentina, Australia, Brazil, Canada, Chile, China, Colombia, Ecuador, the European Union, Hong Kong, China, India, Indonesia, Jordan, Malaysia, Mexico, Morocco, Pakistan, Panama, Philippines, Saudi Arabia, Singapore, South Africa, Republic of Korea, Taiwan, Province of China, and the United Arab Emirates (hereinafter together with the Complainant’s United States trademarks, the “AFTON CHEMICAL Mark”).
The Complainant first became aware of the Disputed Domain Name when one of its banking partners received a fraud prevention alert notifying the bank that a “Look–alike Domain” had been registered as <aftomchemical.com>. The bank forwarded the notice to the Complainant on October 23, 2019.
The Complainant has owned the domain name <aftonchemical.com> for many years, which resolves to its official website at “www.aftonchemical.com“, and which operates to promote and describe its chemical goods and services.
The Disputed Domain Name was registered on October 18, 2019. The Disputed Domain Name does not host an active or substantive website, but rather resolves to a landing page that states: “This site can’t be reached. aftomchemical.com’s server IP address could not be found.”
5. Parties’ Contentions
The following are the Complainant’s contentions:
- the Disputed Domain Name is confusingly similar to the Complainant’s trademark or trademarks.
- the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
- the Disputed Domain Name was registered and is being used in bad faith.
- the Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)(i-iii)):
(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark. The Panel concludes that the Disputed Domain Name is confusingly similar to the AFTON CHEMICAL Mark.
It is uncontroverted that the Complainant has established rights in the AFTON CHEMICAL Mark based on its years of use as well as its numerous registered trademarks for the AFTON CHEMICAL Mark in the United States and worldwide. The general rule is that “registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”. See CWI, Inc. v. Domain Administrator c/o Dynadot, WIPO Case No. D2015-1734. The Respondent has not rebutted this presumption, and therefore the Panel finds that the Complainant has enforceable rights in the AFTON CHEMICAL Mark.
The Disputed Domain Name <aftomchemical.com> consists of a misspelling of the AFTON CHEMICAL Mark, followed by the generic Top-Level Domain (“gTLD”) “.com”. This misspelling is an example of typosquatting, a situation in which a domain name includes a misspelled registered trademark. Here, the use of the letter “m” in the Disputed Domain Name instead of the “n” in the AFTON CHEMICAL Mark does not operate to prevent a finding of confusing similarity between the AFTON CHEMICAL Mark and the Disputed Domain Name. See, e.g., ALH Group Pty Ltd v. Naveen Mathur, WIPO Case No. D2015-2004; see also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), at section 1.9, which 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 …”. This is especially true in the present case where the letters “m” and “n” are very close to each other on a typical “qwerty” keyboard, meaning that if one were to use the second finger of one’s right hand, a single slip of the finger would result in an Internet user who intended to visit the Complainant’s website at “www.aftonchemical.com” visiting the Respondent’s website instead. See Sanofi v. Domains By Proxy, LLC / domain admin, WIPO Case No. D2013-0368.
Furthermore, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.
Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.
B. Rights or Legitimate Interests
Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production of demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, at section 2.1.
In this case, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case and there is no evidence in the record that the Respondent is in any way associated with the Complainant. Furthermore, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its AFTON CHEMICAL Mark. The Respondent does not run any business under the name “Afton Chemical” nor is the Respondent making a legitimate noncommercial or fair use of the Disputed Domain Name.
Finally, the disputed domain name appears to be passively held (see the discussion below), the respondent cannot be reasonably found to have made a bona fide offering of goods or services. In this case, 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. The Respondent has not submitted any substantive arguments or evidence to rebut the Complainant’s prima facie case.
Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.
C. Registered and Used in Bad Faith
The Panel finds that based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy.
First, bad faith may be found where the Respondent knew or should have known of the Complainant’s registration and use of the AFTON CHEMICAL Mark prior to registering the Disputed Domain Name. See FaçonnableSASv. Names4sale, WIPO Case No. D2001-1365. Such is true in the present case in which the Respondent registered the Disputed Domain Name years after the Complainant obtained its trademark registrations for the AFTON CHEMICAL Mark. The worldwide use of the AFTON CHEMICAL Mark makes it disingenuous for the Respondent to claim that it was unaware that the registration of the Disputed Domain Name would violate the Complainant’s rights. See Expedia, Inc. v. EuropeanTravelNetwork, WIPO Case No. D2000-0137 (finding bad faith where the respondent registered the domain name after the complainant established rights in the complainant’s trademarks).
Second, in the circumstances of this case, the Respondent’s registration of the Disputed Domain Name that is confusingly similar to (and in this case, misspelled) the Complainant’s trademark is evidence of bad faith registration and use. See EbayInc. v. Wangming, WIPO Case No. D2006-1107; VeuveClicquotPonsardin, MaisonFondéeen 1772 v. ThePolygenixGroupCo., WIPO Case No. D2000-0163 (use of a name connected with such a well-known service and product by someone with no connection to the service and product suggests opportunistic bad faith).
Finally, inactive or passive holding of the Disputed Domain Name by the Respondent may amount to bad faith use. See AdvanceMagazinePublishersInc. andLesPublicationsCondéNastS.A. v.ChinaVogue.com, WIPO Case No. D2005-0615; Sociétépourl’OeuvreetlaMémoired’AntoinedeSaintExupéry – SuccessionSaintExupéry – D’Agayv. PerlegosProperties, WIPO Case No. D2005-1085. It has long been held in UDRP decisions that the passive holding of a domain name that incorporates a well-known trademark without a legitimate Internet purpose may indicate that the Disputed Domain Name is being used in bad faith under paragraph 4(a)(iii) of the Policy. See TelstraCorporationLimitedv. NuclearMarshmallows, WIPO Case No. D2000-0003; JupitersLimitedv. AaronHall, WIPO Case No. D2000-0574.
Accordingly, the third element of paragraph 4(a) has been met by the Complainant.
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 <aftomchemical.com> be transferred to the Complainant.
Lynda M. Braun
Date: December 31, 2019