WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Valvoline Licensing and Intellectual Property LLC v. Domain Administrator, See PrivacyGuardian.org / Shi Lei

Case No. D2020-2485

1. The Parties

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

Respondent is Domain Administrator, See PrivacyGuardian.org, United States / Shi Lei, China.

2. The Domain Names and Registrar

The disputed domain names <valvolinebenefitenrollment.com> and <valvolinebenefitsenrolment.com> (“Domain Names”) are registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 25, 2020. On September 25, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On September 28, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on September 29, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on October 13, 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 Respondent of the Complaint, and the proceedings commenced on October 14, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 3, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 8, 2020.

The Center appointed Marina Perraki as the sole panelist in this matter on November 23, 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

Complainant was founded in 1866 by Dr. John Ellis, the inventor of the first lubricating oil and originator of the VALVOLINE trademark. VALVOLINE brand has been used for over 150 years and, per Complaint, is one of the most recognized brands in the global automotive lubricant industry. Per Complaint, Complainant is known as a leading worldwide producer and distributor of premium branded automotive, commercial and industrial lubricants, and automotive chemicals.

According to “www.similarweb.com”, Complainant’s website located at “www.valvoline.com” received 358.65 thousand total visits during a six-month period ranging from November 2019 to April 2020. Further, according to Alexa.com it has a global ranking of 112,367 and ranks 33,887 in the United States.

Complainant is the owner of inter alia the following trademarks:

- United States trademark registration No. 0053237, VALVOLINE (word mark), filed on April 14, 1905, first use in commerce July, 1873 and registered on May 29, 1906, for goods in International class 4;
- United States trademark registration No. 0670453, VALVOLINE (word mark), filed on December 18, 1957, first use in commerce September, 28, 1957 and registered on December 2, 1958, for goods in International class 1;
- European Union Trade Mark registration No. 009847773, VALVOLINE (word mark), filed on March 14, 2011 and registered on October 25, 2011, for goods and services in International classes 1, 4, and 35; and
- International trademark registration VALVOLINE (word), No. 568949A, registered on March 19, 1991, for goods in International classes 1, 3, and 4, designating, inter alia, China.

Complainant is also the owner of, inter alia, the domain names <valvoline.com> registered on March 3, 1995, <valvolinebenefit.com> registered on January 3, 2019, <valvolinebenefits.com> registered on August 8, 2018, and <valvolinebenefitsenrollment.com> registered on the same day as the Domain Names, namely on June 16, 2020.

Complainant sent cease and desist letters to Respondent, initially registered under a privacy shield, on July 7, 2020, July 17, 2020 and July 27, 2020, to which Respondent did not reply.

Both Domain Names <valvolinebenefitenrollment.com> and <valvolinebenefitsenrolment.com> were registered on June 16, 2020, and resolve to websites that contain links to advertising for or websites of others (the “Websites”).

5. Parties’ Contentions

A. Complainant

Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Names.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements, which Complainant must satisfy with respect to the Domain Name:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) 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.

A. Identical or Confusingly Similar

Complainant has demonstrated rights through registration and use of the VALVOLINE mark.

The Panel finds that the Domain Names are confusingly similar to the VALVOLINE trademark of Complainant.

The Domain Names incorporate the said trademark of Complainant in its entirety. This is sufficient to establish confusing similarity (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525).

The addition of the words “benefitenrollment” and “benefitsenrolment” does not prevent a finding of confusing similarity, as the VALVOLINE trademark remains clearly distinguishable (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8).

The generic Top-Level Domain (“gTLD”) “.com” is also disregarded, as gTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons only (Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275).

Complainant has established Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Names.

Respondent has not submitted any response and has not claimed any rights or legitimate interests with respect to the Domain Names. As per the Complaint, Respondent was not authorized to register the Domain Names.

Respondent did not demonstrate, prior to the notice of the dispute, any use of the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services.

As Complainant demonstrated, Respondent is using the Domain Names to redirect internet users to websites featuring links to third-party websites. Per Complaint, presumably Respondent received pay-per-click (“PPC”) fees from the linked websites that were listed at the Websites and used the Domain Names for its own commercial gain . The use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users, such as in the case at issue (WIPO Overview 3.0 , section 2.9).

The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Names.

Complainant has established Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation” are evidence of the registration and use of the Domain Names in bad faith:

(i) circumstances indicating that Respondent has registered or has acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Domain Names registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Names; or

(ii) that Respondent has registered the Domain Names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) that Respondent has registered the Domain Names primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the Domain Names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

The Panel concludes that Respondent has registered and uses the Domain Names in bad faith. As per Complaint, Complainant’s mark VALVOLINE is known worldwide. Because the VALVOLINE mark had been used and registered at the time of the Domain Names’ registrations by Respondent, the Panel finds it more likely than not that Respondent had Complainant’s mark in mind when registering the Domain Names (Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., WIPO Case No. D2014-1754).

Respondent should have known about Complainant’s rights, due to the fact that Complainant’s mark had goodwill and reputation when the Domain Names were registered. Furthermore, such knowledge is readily obtainable through a simple browser search due to Complainant’s use of VALVOLINE mark on the Internet, e.g. at “www. valvoline.com” (Caesars World, Inc. v. Forum LLC, WIPO Case No. D2005-0517; Compart AG v. Compart.com / Vertical Axis Inc., WIPO Case No. D2009-0462).

Respondent could have searched the United States, European Union or WIPO trademark registry and would have found Complainant’s prior registrations in respect of VALVOLINE (Citrix Online LLC v. Ramalinga Reddy Sanikommu Venkata, WIPO Case No. D2012-1338).

Furthermore, the Domain Names incorporate in its entirety Complainant’s mark plus the additional terms “benefitenrollment” and “benefitsenrolment” which, per Complainant, relate to Complainant’s employee benefit system. In addition, Complainant is the owner of the domain name <valvolinebenefitsenrollment.com> leading to a website, which provides an access account for users to log in. Complainant is also the owner of domain names which contain the words “benefit(s)” and “benefit enrollment”.

The Panel takes also into account that Respondent registered the Domain Names on the same day as Complainant registered its <valvolinebenefitsenrollment.com> domain name, namely June 16, 2020, which strongly suggests that Respondent knew of Complainant and its rights, when registering the Domain Names.

As regards bad faith use, Complainant demonstrated that the Domain Names lead to Websites displaying PPC links. Accordingly, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites, by creating a likelihood of confusion with Complainant’s mark. It has been recognized that use of another’s trademark to generate revenue from Internet advertising can constitute registration and use in bad faith (McDonald’s Corporation v. ZusCom, WIPO Case No. D2007-1353; Volkswagen Aktiengesellschaft v. Robert Brodi, WIPO Case No. D2015-0299; SAP SE v. Domains by Proxy, LLC / Kamal Karmakar, WIPO Case No. D2016-2497; WIPO Overview 3.0 , section 3.5 ).

Lastly, the Domain Names were initially registered with a privacy shield service to hide the registrant’s identity, whereas Respondent did not reply to the cease and desist letters sent by Complainant. Respondent’s failure to respond to Complainant’s cease and desist letters constitutes further indication of bad faith (Samsung Electronics Co., Ltd. v. EAO Digital Solutions, WIPO Case No. D2012-0693) and so is the concealment of the Domain Names holder’s identity through use of a privacy shield (Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696).

The Panel also takes into account that, as Complainant demonstrated, Respondent has engaged in a pattern of trademark-abusive domain name registrations, including: John Middleton Co. v. Domain Administrator, See PrivacyGuardian.org / Shi Lei, WIPO Case No. D2020-0668, LEGO Juris A/S v. Domain Administrator, See PrivacyGuardian.org / Shi Lei, WIPO Case No. D2018-0987, and Aviva Brands Limited v. Domain Administrator, See PrivacyGuardian.org / Shi Lei, WIPO Case No. D2018-2449.

Under these circumstances and on this record, the Panel finds that Respondent has registered and is using the Domain Names in bad faith.

Complainant has established Policy paragraph 4(a)(iii).

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 Domain Names, <valvolinebenefitenrollment.com>, and <valvolinebenefitsenrolment.com>, be transferred to Complainant.

Marina Perraki
Sole Panelist
Date: December 7, 2020