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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Valvoline Licensing and Intellectual Property LLC v. Super Privacy Service LTD c/o Dynadot / zhangcunshuo

Case No. D2020-0998

1. The Parties

The Complainant is Valvoline Licensing and Intellectual Property LLC, United States of America (“United States” or “US”), represented by CSC Digital Brand Services AB, Sweden.

The Respondent is Super Privacy Service LTD c/o Dynadot, United States / zhangcunshuo, China.

2. The Domain Name and Registrar

The disputed domain name <valvolinebenfits.com> is registered with Dynadot, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 23, 2020. On April 23, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 24, 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 April 28, 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 May 4, 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 May 5, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 25, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 4, 2020.

The Center appointed Clive Duncan Thorne as the sole panelist in this matter on June 11, 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

The Complainant was founded in 1866 by Dr. John Ellis, the inventor of the first lubricating oil and the originator of the trade mark VALVOLINE. Valvoline has been one of the most recognized and respected premium consumer brands in the global automotive lubricant industry. The Complainant’s brand Valvoline Instant Oil Change was founded in 1986 and is the quick, easy and trusted choice for drive-thru oil changes and maintenance services. It is the second largest quick lube business in the United States with more than 1,100 locations.

It operates and franchises over 1,070 Valvoline Instant Oil Change centers in the US and also has a growing international presence with its products being sold in approximately 140 countries through its extensive sales force and technical support organization. A list of subsidiaries is set out in Annex 6.2 to the Complaint and a copy of its 2018 Annual Report at Annex 6.3 to the Complaint.

The Complainant has a strong Internet presence using its primary website at the domain name <valvoline.com> as well as social media platforms including Facebook, Twitter and Instagram.

The Complainant is the owner of the domain name <valvolinebenefits.com> registered on August 8, 2018, which is used to provide salary, benefits and compensation information to its employees.

The Complainant is the owner of trade mark registrations for the mark VALVOLINE in various jurisdictions. Exhibited at Annex 1 to the Complaint are extracts from the online databases of the Canadian Intellectual Property Office (CIPO), United States Patent and Trade Mark Office (USPTO). The relevant trade marks for VALVOLINE are set out in the Complaint including USPTO No. 0053237 in class 4 registered on May 29, 1906; USPTO No. 0670453 in class 1 registered on December 2, 1958; CIPO No. TMA141455 in classes 1, 2, 3, 4, 7, 11, 12, 17, 37 and 39 registered on August 20, 1965; CIPO No. TMA631341 in classes 6, 8, 9, 10, 12, 14, 16,18, 20, 21, 24, 25, 28, 34, 36 and 41 registered on January 27, 2005; and CIPO No. TMA710957 in classes 7, 8, 12 and 21 registered on April 3, 2008. The Complainant also has registered trade marks for VALVOLINE in China, for example, Chinese registration No.162814 in class 4 registered on September 30, 1982.

All of the above registrations predate registration of the disputed domain name <valvolinebenfits.com>, which was registered on October 19, 2019. The disputed domain name resolves to a website featuring links to third-party websites relating to employee benefits.

In the absence of a Response the Panel finds the above evidence as true and proceeds to determine the Complaint on the basis of that evidence.

5. Parties’ Contentions

A. Complainant

The Complainant submits:

(i) The disputed domain name is confusingly similar to the trade mark VALVOLINE in which the Complainant has registered rights.

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not commonly known by the disputed domain name and has not been authorized to use it by the Complainant.

(iii) The disputed domain name was registered and is being used in bad faith. The Respondent has demonstrated a prior knowledge of the Complainant’s brand and business and knew or should have known of the existence of the Complainant’s registered marks at the date of registration of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has registered rights in the mark VALVOLINE as set out in section 4. above.

The disputed domain name consists of the mark VALVOLINE together with the added descriptive term “benfits” which appears to be a misspelling of the word “benefits”. The Complainant stresses that it offers competitive pay and compensation benefits to its employees and provides information about employee benefits at its website accessed at “www.valvolinebenefits.com”.

It is well established that the use of a complainant’s trade mark together with an additional term or word (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similar to the complainant’s trade mark. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The Panel finds that the dominant part of the disputed domain name is the mark VALVOLINE to which, is added the misspelt descriptive word “benfits”. The disputed domain name is therefore confusingly similar to the Complainant’s mark VALVOLINE in which the Complainant has registered rights.

The Panel in reaching this finding also takes into account that it is well-established that the generic Top-Level Domain (“gTLD”), domains in this case “.com”, should be disregarded in establishing confusing similarity.

B. Rights or Legitimate Interests

The Complainant submits that there is no evidence that the Respondent is commonly known by the disputed domain name. There is also no evidence that the Complainant has licensed, authorized or permitted the Respondent to register or use the disputed domain name. Accordingly, the Respondent cannot be regarded as having acquired any rights or legitimate interests in the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy.

On the evidence the Respondent is using the disputed domain name to redirect Internet users to a website featuring links to third-party websites relating to employee benefits. This can be seen at Annex 3 to the Complaint, which shows a screenshot of the Respondent’s website. As such the Respondent is not using the disputed domain name to provide a bona fide offering of goods or services as allowed under paragraph 4(c)(i) of the Policy, nor as a legitimate noncommercial or fair use within paragraph 4(c)(iii) of the Policy.

In the absence of a Response and evidence to rebut the Complainant’s prima facie case the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The Complainant relies upon the evidence that the Complainant and its mark VALVOLINE are known internationally with trade mark registrations for VALVOLINE in numerous countries. The Complainant has marketed its goods and services under the mark VALVOLINE since 1866.

It submits that in registering the confusingly similar disputed domain name the Respondent has demonstrated a knowledge of and familiarity with the Complainant’s brand and business.

Moreover, as can be seen from Annex 3 to the Complaint, the fact that the disputed domain name resolves to a website featuring multiple third-party links relating to employee benefits makes it difficult to regard the Respondent as being unaware of the Complainant or its use of its domain name <valvolinebenefits.com>. The Complainant relies upon the decision in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, where the panel indicated that it is “not possible to conceive of a plausible situation in which the Respondent would have been unaware of this fact at the time of registration”. On the evidence, this Panel finds that is the position here.

The Complainant also submits that at the date of registration of the disputed domain name the Respondent knew, or at least should have known, of the existence of the Complainant’s well-known trade marks and to register the disputed domain name in those circumstances constitutes “ bad faith per se”. This submission is supported by the evidence of substantial use of the mark VALVOLINE by the Complainant as the second quick-lube chain and third passenger car motor oil brand in the United States as well as wide use elsewhere in the world. The Panel agrees with the submission that it “defies common sense” to believe that the Respondent coincidentally selected the precise disputed domain name without any knowledge of the Complainant and its trade marks.

The Complainant also submits that by directing the disputed domain name to a website featuring multiple third-party links relating to employee benefits, the Respondent has intended to capitalize on the fame and goodwill of the Complainant’s trade marks in order to increase traffic to the website at the disputed domain name for its commercial gain. Therefore, the Respondent is using the disputed domain name in bad faith. The Panel agrees with the submission.

Two other factors support a finding of registration and use in bad faith. Firstly, that at the time of the initial filing of the Complaint the Respondent had employed a privacy service to hide its identity. It has been held that this can constitute evidence of bad faith registration and use.

Secondly, that the Respondent failed to respond to three cease and desist letters sent to it by the Complainant’s agent; CSC Domain Recovery Team. Copies of these letters are exhibited at Annex 10 to the Complaint.

On this evidence and in the absence of a Response and evidence to the contrary this Panel finds that the Respondent has registered and is using the disputed domain name in bad faith within paragraph 4(a)(iii) 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 <valvolinebenfits.com> be transferred to the Complainant.

Clive Duncan Thorne
Sole Panelist
Date: June 20, 2020

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