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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

MOTUL v. Contact Privacy Inc. Customer 0155098997 / Milen Radumilo

Case No. D2020-0597

1. The Parties

The Complainant is MOTUL, France, represented by ORDIPAT, France.

The Respondent is Contact Privacy Inc. Customer 0155098997, Canada / Milen Radumilo, Romania.

2. The Domain Name and Registrar

The disputed domain name <motulhaiphong.com> (the “Disputed Domain Name”) is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 10, 2020. On March 10, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 11, 2020, 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 March 13, 2020 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 March 17, 2020.

The Center verified that the Complaint together with the amended 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 March 24, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 13, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 14, 2020.

The Center appointed Lynda M. Braun as the sole panelist in this matter on April 30, 2020. 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

Established more than 160 years ago, the Complainant is a French company specializing in the international oil and lubricants sector. The Complainant formulates, produces and sells motor vehicle lubricants in more than 100 countries, focusing on the automotive and industrial markets. The Complainant also sponsors many motor sport events.

The Complainant owns 144 valid trademarks registered worldwide for the mark MOTUL, including: MOTUL, French Trademark Registration No. 1712391, registered on December 17, 1991, in international classes 1 to 45; MOTUL, International Trademark Registration No. 600872, registered on May 6, 1993, in international classes 1 and 4, designating many jurisdictions; MOTUL, International Trademark Registration No. 267359, registered on March 21, 1963, in international classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 11, 12, 16, 17, 19, 35, 39, 40, and 42, designating many jurisdictions, including Romania, where the Respondent resides; and MOTUL, European Union Trade Mark Registration No. 000548321, registered on February 3, 1999, in international classes 1 and 4, among others (collectively, the “MOTUL Mark”).

The Complainant is also the registrant of a large number of domain names (approximately 400), most of which incorporate the MOTUL Mark in its entirety, and many that include a country code Top Level Domain. For example, the Complainant owns <motul.com>, <motul.fr>, <motul.eu>, <motul.ru>, <motul.us>, <motul.jp>, <motul.it>, and <motul.co.uk>, among many others.

The Disputed Domain Name was registered on June 30, 2019. As provided in the Complaint, the Disputed Domain Name resolved to a pay-per-click landing page that displayed sponsored links of online stores that specialized in the maintenance of cars and motorcycles and sold oil and lubricants of the Complainant’s competitors. At the bottom of the landing page, there was a link for inquiries regarding the sale of the Disputed Domain Name that stated “This domain motulhaiphong.com may be for sale. Click here to inquire about this domain.” When clicking the link, it resolved to an online domain name market place, which offered for sale the Disputed Domain Name at USD 688.

5. Parties’ Contentions

A. Complainant

The following are the Complainant’s contentions:

- the Disputed Domain Name is confusingly similar to the Complainant’s trademark.

- 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.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the Complainant prove the following three elements in order to prevail in this proceeding:

(i) the Disputed Domain Name is identical or confusingly similar to trademarks or service marks 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 MOTUL Mark as set forth below.

It is uncontroverted that the Complainant has established rights in the MOTUL Mark based on its many years of use as well as its over 144 registered trademarks for the MOTUL Mark in jurisdictions 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”. 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 MOTUL Mark.

The Disputed Domain Name consists of the entirety of the MOTUL Mark along with the term “haiphong”1 , followed by the generic Top Level Domain (“gTLD”) “.com”. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of other terms. As stated in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “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”. Thus, the addition of the geographic term “haiphong” to the Complainant’s MOTUL Mark does not prevent a finding of confusing similarity. See Gannett Co., Inc. v. Henry Chan, WIPO Case No. D2004-0117 (a domain name incorporating a well-known trademark combined with a geographically descriptive term is confusingly similar to the trademark); Inter-IKEA Systems B.V. v. Hoon Huh, WIPO Case No. D2000-0438 (the addition of the term “korea” in <ikea-korea.com> does not prevent the domain name from being confusingly similar to the Complainant’s trademark).

Finally, 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. Thus, the Panel concludes that the Disputed Domain Name is confusingly similar to the Complainant’s MOTUL Mark.

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 has 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 evidence that demonstrates rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, 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. Furthermore, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its MOTUL Mark. Nor does the Complainant have any type of business relationship with the Respondent. Based on the use made of the Disputed Domain Name to create a pay-per-click landing page and to offer the Disputed Domain Name for sale, the Panel finds that the Respondent was not making a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Disputed Domain Name. On the contrary, the Respondent had used the MOTUL Mark for commercial gain.

Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.

C. Registered and Used in Bad Faith

This 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, the registration of a domain name that is confusingly similar to a trademark by an entity that has no relationship to that mark may be suggestive of opportunistic bad faith. See Ebay Inc. v. Wangming, WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163. Based on the circumstances here, the Respondent registered and used the Disputed Domain Name in bad faith to target the Complainant’s MOTUL Mark for commercial gain.

Second, the Panel concludes that the Respondent had actual knowledge of the Complainant’s rights in its widely used MOTUL Mark when registering the Disputed Domain Name. The Respondent registered the Disputed Domain Name decades after the Complainant first used and obtained its numerous trademark registrations for the MOTUL Mark. Further, the creation of a pay-per-click webpage that included links to the Complainant’s competitors is additional evidence that the Respondent had the Complainant in mind when registering the Disputed Domain Name. See Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763 (a finding of bad faith may be made where the respondent “knew or should have known” of the registration and/or use of the trademark prior to registering the domain name).

Third, with respect to the use of the Disputed Domain Name, the webpage at the Disputed Domain Name displaying pay-per-click links indicates that the Respondent, by using the Disputed Domain Name, has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location in bad faith, as provided in paragraph 4(b)(iv) of the Policy. Further, the offering for sale of the Disputed Domain Name for USD 688, which appears to be in excess of the Respondent’s out-of-pocket costs, also indicates bad faith use of the Disputed Domain Name, as provided in paragraph 4(b)(i) of the Policy.

Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant.

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 <motulhaiphong.com> be transferred to the Complainant.

Lynda M. Braun
Sole Panelist
Date: May 13, 2020

1 The term “haiphong” is the name of an industrial city in the northern part of Viet Nam.

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