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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

Case No. DCO2018-0020

1. The Parties

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

The Respondent is Super Privacy Service LTD c/o Dynadot of San Mateo, California, U.S.

2. The Domain Name and Registrar

The disputed domain name <valvolineignitionprogram.co> (“Domain Name”) is registered with Dynadot, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 4, 2018. On July 4, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 6, 2018, 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 July 6, 2018 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 July 10, 2018.

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 July 11, 2018. In accordance with the Rules, paragraph 5, the due date for the Respondent to file a Response was July 31, 2018. The Respondent did not submit any response. Accordingly, the Center notified the parties of the Respondent’s default on August 2, 2018.

The Center appointed Marylee Jenkins as the sole panelist in this matter on August 10, 2018. 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

Based on the review of the uncontested evidence submitted by the Complainant, the Panel determines that the Complainant is the owner of several trademark registrations for the word mark VALVOLINE in multiple jurisdictions including U.S. Trademark Registration No. 0053237 (filed on April 14, 1905; registered on May 29, 1906) in class 4; U.S. Trademark Registration No. 5240039 (filed on September 23, 2016; registered on July 11, 2017) in class 8; European Union Trade Mark Registration No. 009847773 (filed on March 14, 2011; registered on October 25, 2011) in classes 1, 4 and 35; Chinese Trademark Registration No. 162814 (filed on July 15, 1980; registered on September 30, 1982) in class 4; and Chinese Trademark Registration No. 7906409 (filed on December 11, 2009; registered on January 21, 2011) in class 4. The Complainant is also the owner of two trademark registrations in China for the mark VALVOLINE and design including Chinese Trademark Registration No. 1972160 (filed on August 15, 2001; registered on August 7, 2003) in class 4; and Chinese Trademark Registration No. 2020512 (filed on December 2, 1999; registered on February 21, 2005) in class 4 (individually and collectively referred to as the “Complainant’s Mark”). The Complainant also owns the domain names <valvoline.com> and <valvolineignitionprogram.com> and markets its services and programs at the websites accessible at these domain names.

The Domain Name <valvolineignitionprogram.co> was registered on November 11, 2017. The Domain Name resolves to a website offering sponsored third-party links.

5. Parties’ Contentions

A. Complainant

The Complainant states that Valvoline LLC was founded in 1866 by Dr. John Ellis, the inventor of the first lubricating oil and the originator of the VALVOLINE trademark. The Complainant further states that for over 150 years, the VALVOLINE brand has been one of the most recognized and respected premium consumer brands in the global automotive lubricant industry and that it is a leading worldwide producer and distributor of premium branded automotive, commercial and industrial lubricants, and automotive chemicals. The Complainant states that it operates and franchises more than 1,070 Valvoline Instant Oil Change centers in the U.S. and has a growing international presence with its products being sold in approximately 140 countries through its extensive sales force and technical support organization. The Complainant further maintains an Internet presence through its primary website at the domain name <valvoline.com> as well as through its various social media platforms including Facebook, Twitter, and Instagram.

The Complainant further states that it owns and has obtained numerous trademark registrations for the Complainant’s Mark, including those cited above, and that none of these registrations have been abandoned, cancelled, or revoked. Further the Complainant states that it has made significant investments over the years to advertise, promote, and protect the Complainant’s Mark through various forms of media, including the Internet. Based on its extensive use and trademark registrations, the Complainant alleges that it owns the exclusive right to use the Complainant’s Mark.

The Complainant alleges that the Domain Name is confusingly similar to the Complainant’s Mark and the fact that the Respondent has added the descriptive phrase “ignition program” to the Complainant’s Mark, which is closely linked to and associated with the Complainant’s brand and the Complainant’s Mark, only serves to underscore and increase the confusing similarity between the Domain Name and the Complainant’s Mark. The Complainant further notes that in 2009, it launched a program called the “Team Valvoline Ignition Program”, which is an educational partnership with more than 3,000 secondary institutions across the U.S. to teach students about automobiles. Additionally, the Complainant notes that it has a website at the domain name <valvolineignitionprogram.com> where students can sign up to learn and earn credits in the program.

The Complainant further alleges that the Respondent is not commonly known by the Domain Name, which evinces a lack of rights or legitimate interests in the Domain Name. Additionally, the Complainant notes that it has not licensed, authorized, or permitted the Respondent to register domain names incorporating the Complainant’s Mark. Rather the Complainant notes that the Respondent is using the Domain Name to redirect internet users to a website featuring links to third-party websites, some of which directly compete with the Complainant’s business. Further, the Complainant states that the Respondent’s website features a link that directly references the Complainant and its business with the presumption that the Respondent is receiving pay-per-click fees from the linked websites that are listed on the Domain Name’s website. The Complainant therefore alleges that the Respondent is not using the Domain Name to provide a bona fide offering of goods or services nor a legitimate noncommercial or fair use as allowed under the Policy.

The Complainant further alleges that the Respondent registered the Domain Name significantly after: (i) the Complainant filed for registrations of the Complainant’s Mark in China, the U.S. and the European Union; (ii) the Complainant’s first use in commerce of the Complainant’s Mark in 1866; and the Complainant’s of its <valvoline.com> domain name.

The Complainant alleges that the Respondent has demonstrated a knowledge of and familiarity with the Complainant’s brand and business. The Complainant further alleges that the Respondent’s use of the Complainant’s Mark, or any minor variation of it, strongly implies bad faith coupled with the Domain Name being identical to the name of the Complainant’s educational program “Valvoline Ignition Program”.

The Complainant further alleges that at the time of registration of the Domain Name, the Respondent knew, or at least should have known, of the existence of the Complainant’s Mark and that the registration of domain names containing well-known trademarks constitutes bad faith per se. The Complainant further alleges that the Respondent created a likelihood of confusion with the Complainant and the Complainant’s Mark by registering a Domain Name that incorporates the Complainant’s Mark in its entirety and a closely related phrase, which demonstrates that the Respondent is using the Domain Name to confuse unsuspecting Internet users looking for the Complainant’s services, and to mislead Internet users as to the source of the Domain Name and website. By creating this likelihood of confusion between the Complainant’s Mark and the Domain Name, leading to misperceptions as to the source, sponsorship, affiliation, or endorsement of the Domain Name, the Complainant alleges that the Respondent has demonstrated a nefarious intent to capitalize on the fame and goodwill of the Complainant’s Mark in order to increase traffic to the Domain Name’s website for the Respondent’s own pecuniary gain, as evidenced by the presence of multiple pay-per-click links posted to the Respondent’s website, some of which directly reference the Complainant and/or its competitors.

The Complainant further alleges that the Respondent, at the time of initial filing of the Complaint, had employed a privacy service to hide its identity, which supports an inference of bad faith registration and use. The Complainant additionally alleges that it contacted the Respondent through a cease and desist letter regarding the unauthorized use of the Complainant’s Mark in the Domain Name and received a response from the Respondent requesting payment of USD 500 for the Domain Name. Based on the above, the Complainant alleges that it is more likely than not that the Respondent knew of and targeted the Complainant’s Mark and that the Respondent should be found to have registered and used the Domain Name in bad faith.

B. Respondent

No response was received from the Respondent with respect to this proceeding.

6. Discussion and Findings

Paragraph 4(a) of the Policy states that the domain name holder is to submit to a mandatory administrative proceeding in the event that a third party (complainant) asserts to an ICANN-approved dispute resolution service provider that:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the domain name holder 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 14(b) of the Rules, the Panel shall draw such inferences from the Respondent’s default as the Panel considers appropriate. Nevertheless, the Panel may rule in the Complainant’s favor only after the Complainant has proven that the above elements are present.

A. Domain Name Identical or Confusingly Similar to the Complainant’s Mark

The Panel finds that the Complainant has provided sufficient evidence to show that it is the owner of and has rights in and to the Complainant’s Mark.

A review of the second-level domain (“valvolineignitionprogram”) of the Domain Name shows that the domain comprises the Complainant’s Mark VALVOLINE in its entirety and the descriptive phrase “ignition program” as a suffix. The Colombian country-code Top-Level Domain “.co” in the Domain Name provides no significance in this review in determining whether the Domain Name is identical or confusingly similar to the Complainant’s Mark. Rather the review of the Complainant’s trademark registrations for the word mark VALVOLINE in multiple classes and countries shows that such registrations well predate the Respondent’s registration of the Domain Name. The inclusion of the descriptive phrase “ignition program” in the domain does not differentiate the Domain Name from the Complainant’s Mark. Rather such inclusion along with the evidence of the Complainant’s own web site at the domain name <valvolineignitionprogram.com> shows that the Respondent was clearly aware of the Complainant’s Mark and web site when registering the Domain Name. Based on this uncontested evidence, the Panel concludes that this Domain Name is confusingly similar to the Complainant’s Mark in which the Complainant has rights and that paragraph 4(a)(i) of the Policy has been satisfied.

B. Rights or Legitimate Interests in the Domain Name

There is no evidence that the Complainant has at any time ever licensed, sponsored, endorsed or authorized the Respondent to register or use the Complainant’s Mark in any manner. In addition, no evidence has been presented that before notice to the Respondent of the dispute, the Respondent had been using or was making demonstrable preparations to use the Domain Name in connection with any type of bona fide offering of goods or services or that the Respondent is commonly known by the Domain Name, as an individual, business or otherwise. Rather the uncontested evidence clearly shows that the Complainant had well-established rights to the Complainant’s Mark in multiple jurisdictions that substantially predate the Respondent’s registration of the Domain Name. In addition, the Complainant has presented sufficient evidence to result in a finding that the Respondent is misleadingly diverting consumers to a commercial website in an apparent attempt to profit from the Internet traffic misdirected to this Domain Name. Such use of the Domain Name by the Respondent cannot be considered as being legitimate noncommercial or fair use of the Domain Name. The Panelist therefore concludes that the Respondent has no rights or legitimate interests in the Domain Name and that paragraph 4(a)(ii) of the Policy has been satisfied.

C. Domain Name Registered and Used in Bad Faith

Based upon the undisputed evidence submitted by the Complainant, the Panel finds that the Respondent clearly had actual knowledge of the Complainant’s Mark when registering the Domain Name. This finding is supported by the uncontested evidence showing that the registration of the Domain Name by the Respondent in no way predates the Complainant’s substantially earlier filing dates of its trademark applications for the Complainant’s Mark. Coupled with the evidence of the Complainant’s own website at the domain name <valvolineignitionprogram.com>, the Complainant has more than sufficiently shown that the Respondent registered the Domain Name in bad faith for the purpose of intentionally diverting Internet users looking for the Complainant and its website to the Respondent’s site. As the uncontested evidence also shows, the Respondent was not making any legitimate noncommercial or fair use of the Domain Name and clearly had knowledge of the Complainant, the Complainant’s Mark and its website based on the misspelling of the Complainant’s website in the Domain Name. In combination with the above circumstances, the Respondent’s use of a privacy service to mask its identity when registering the Domain Name in this instance only further supports a finding of Respondent’s bad faith domain name registration and use.

The Complainant also provided evidence of email exchanges between the Parties, before these proceedings were filed, in which the Respondent offered to sell the Domain Name to the Complainant for USD 500, which is, in the Panel’s view, a sum in excess of out-of-pocket costs directly related to the cost of registering the Domain Name.

The Panel therefore concludes that the Respondent registered and is using the Domain Name to intentionally attempt to attract Internet users to sponsored third-party links on its website by creating a likelihood of confusion with the Complainant’s Mark and its website as to the source, sponsorship, affiliation or endorsement of the Respondent’s site. The Panel further finds that the Respondent registered and is using the Domain Name to create initial interest confusion among Internet users as to the source, sponsorship, affiliation or endorsement of the site and its sponsored third-party links for its own apparent commercial gain.

The Panel accordingly finds that paragraph 4(a)(iii) of the Policy has been satisfied.

7. Decision

For the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the Domain Name <valvolineignitionprogram.co> be transferred to the Complainant.

Marylee Jenkins
Sole Panelist
Date: September 28, 2018

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