WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Valvoline Licensing and Intellectual Property LLC v. Phill Leger

Case No. D2021-1287

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 Group AB, Sweden.

The Respondent is Phill Leger, United States.

2. The Domain Name and Registrar

The disputed domain name <hr-valvoline.com> (the “Domain Name”) is registered with Wild West Domains, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 27, 2021. On April 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 27, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the 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 29, 2021 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 11, 2021.

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 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 1, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 2, 2021.

The Center appointed W. Scott Blackmer as the sole panelist in this matter on June 10, 2021. 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 limited liability company registered in the State of Delaware, United States, which manages trademarks for Valvoline LLC and other entities in the Valvoline group of companies. Valvoline LLC was founded in 1866 by Dr. John Ellis, the inventor of the VALVOLINE motor lubricating oil and the originator of the VALVOLINE trademark. Over the course of 150 years, the Complainant has become a leading worldwide producer and distributor of automotive, commercial, and industrial lubricants and automotive chemicals, currently selling its products in approximately 140 countries. The Complainant operates and franchises more than a thousand Valvoline Instant Oil Change centers in the United States and ranks as the number three passenger car motor oil brand in the do-it-yourself (“DIY”) market by volume in the United States.

The Complainant’s VALVOLINE brand is heavily advertised and has a strong online presence through the Complainant’s primary website at “www.valvoline.com”, as well as its social media platforms including Facebook, Twitter, and Instagram. (The Facebook page has more than 3.5 million followers worldwide.)

The Complainant holds the following trademark registrations, among others, for VALVOLINE as a word mark:

The Registrar reports that the Domain Name was registered in the name of a domain privacy service on February 25, 2021. After receiving notice of the Complaint in this proceeding, the Registrar identified the registrant as the Respondent Mr. Leger, who listed no organization and gave a postal address in the State of New York, United States. The Respondent has not replied to correspondence from the Complainant or the Center, and the domain name used for the Respondent’s email address, <synpower.net>, does not resolve to an active website. The Complainant states that the Respondent is a former employee who was involuntarily separated from employment at one of the Complainant’s Valvoline Instant Oil Change franchise locations in Nanuet, New York, United States on September 17, 2018. The Panel notes that the postal address given for the Respondent in the Domain Name registration is in the same town, on the same road, as that Valvoline Instant Oil Change franchise in Nanuet, New York.

It does not appear that the Domain Name has been associated with an active website to date.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the Domain Name is confusingly similar to its registered VALVOLINE trademark. The Complainant denies that the Respondent has ever been authorized to register domain names incorporating the Complainant’s trademark.

The Complainant argues that the Respondent, a former employee, was well aware of the Complainant and its mark and had no legitimate reason to use it for a domain name. The Complainant cites the “passive holding” doctrine that derives from Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 ("it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith"). Under this doctrine, a domain name based on a highly distinctive and well-established trademark may be logically attributed to opportunistic bad faith, even though the domain name has not yet been used for an active website. Moreover, the Respondent’s conduct in obscuring its identity and avoiding contact or substantive response may also be taken into account in supporting an inference of bad faith in the registration and use of the Domain Name.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:

(i) the 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 domain name; and

(iii) the domain name has been registered and is being used in bad faith.

Under paragraph 15(a) of the Rules, “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

A. Identical or Confusingly Similar

The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the domain name”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.

The Complainant holds VALVOLINE trademark registrations. The Domain Name incorporates this mark in its entirety, adding the letters “hr” (a common abbreviation for “human resources”) and a hyphen. The addition of such generic material does not prevent a finding of confusing similarity. See id. section 1.8. As usual, the generic Top-Level Domain (“gTLD”) “.com” is disregarded as a standard registration requirement. See id. section 1.11.2.

The Panel concludes that the first Policy element is established on these facts.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the respondent may establish rights or legitimate interests in the domain name, by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s 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) that the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is 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.

Because a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1. The Complainant in this proceeding has demonstrated trademark rights, the lack of permission to use its mark, and the Respondent’s failure to use the Domain Name for any legitimate purpose. Thus, the burden shifts to the Respondent to produce evidence of rights or legitimate interests. The Respondent has not done so.

The Panel concludes, therefore, that the Complainant prevails on the second element of the Policy.

C. Registered and Used in Bad Faith

The Policy, paragraph 4(b), furnishes an illustrative list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”. The list is not exhaustive, and the Complainant cites the “passive holding” doctrine (see WIPO Overview 3.0, section 3.3) to demonstrate how non-use of a domain name targeting a well-established mark may indicate bad faith, when that inference is justified in the totality of the circumstances.

Such is the case here. The VALVOLINE mark is well-known and long-established, particularly in the United States where the Respondent is located. The Respondent as a former employee of a franchisee must logically be considered to have actual knowledge of the mark. The Respondent registered the Domain Name using a domain privacy service. The Respondent has not provided a working email address or replied to correspondence delivered to the postal address. In the few months that have elapsed since registering the Domain Name, the Respondent has not used it for a website. The potential for trademark-abusive use is high, however, and it is difficult to conceive of legitimate uses. The Domain Name, with “hr” in the string, could be used for a website or emails that appear to be associated with the Complainant for human resources purposes such as recruiting, staff administration, and employment benefits. The Respondent has not come forward with any alternative, legitimate explanation for the choice of the Domain Name, and the Respondent’s evasive conduct supports an inference of bad faith in the registration and passive holding of the Domain Name to date.

The Panel concludes on this record that the Complainant has established the third element of the Complainant, bad faith.

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 Name, <hr-valvoline.com>, be transferred to the Complainant.

W. Scott Blackmer
Sole Panelist
Date: June 23, 2021