WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Motul v. Filip Deyl and Robert Deyl, Motoservis - Deyl

Case No. D2016-2462

1. The Parties

The Complainant is Motul of Aubervilliers, France, represented by ORDIPAT, France.

The Respondents are Filip Deyl and Robert Deyl, Motorservice - Deyl, of Prague, Czechia, represented by Ambruz & Dark Deloitte Legal s.r.o., Czechia.

2. The Domain Name and Registrar

The disputed domain names <motul.xyz> and <oleje-motul.info> are registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint, relating only to the disputed domain name <motul.xyz>, was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 6, 2016. On December 6, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name <motul.xyz>. On the same day, the Registrar transmitted by email to the Center its verification response confirming that the First Respondent is listed as the registrant and providing the contact details.

The Center verified that the 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 December 12, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 1, 2017.

On December 12, 2016, an email from the technical contact was received by the Center. The Center acknowledged receipt of this email on December 14, 2016.

The Response was filed with the Center on December 28, 2016. However, the First Respondent requested an extension to the Response due date in order to submit annexes to the Response in English. The requested extension was granted to the First Respondent to January 6, 2017 under paragraph 5(b) of the Rules. On January 10, 2017, the First Respondent submitted annexes to the Response translated into English.

Upon the Complainant’s suspension request dated January 5, 2017, the Center notified the suspension of the proceeding on January 6, 2017, and the proceeding was suspended until February 5, 2017. Upon the Complainant’s extension request dated January 23, 2017, the Center confirmed on the same day that the proceeding was suspended further until March 7, 2017.

Upon the Complainant’s request, the proceeding was re-instituted on March 6, 2017, and the Center confirmed that the new Response due date was March 9, 2017. On March 7, 2017, the First Respondent requested extension of the Response due date as the First Respondent was in the course of changing its representative. On March 8, 2017, the Center invited the Complainant to comment on the First Respondent’s extension request. On the same day, the Complainant confirmed that it would revert to the Center in respect of this matter on March 9, 2017.

On March 7, 2017, the Complainant asked the Center if it could add another domain name (<oleje-motul.info>) to the proceeding. On March 8, 2017, the Center informed the Complainant “that the Rules do not explicitly provide for a Complaint to be amended after the commencement of proceeding to include additional domain names. Accordingly, it is for the Panel to determine when appointed whether or not to accept the addition of new domain names to the Complaint and order further procedural steps, if any.”

On March 9, 2017, the Complainant submitted an amended Complaint to include another domain name (<oleje-motul.info>) and stated that it believed that the First Respondent would be given a new deadline to file a Response to the amended Complaint. On March 10, 2017, the Center reiterated that the Panel upon appointment would determine whether or not to accept the addition of new domain name to the Complaint and whether to order any further procedural steps. The Center also confirmed that the Response due date was extended to March 17, 2017.

On March 14, 2017, the First Respondent’s new representatives requested an extension of the Response due date until March 31, 2017. On March 15, 2017, the Center invited the Complainant to comment on the First Respondent’s extension request. On March 16, 2017, the Complainant asserted that it had no objection to such extension request. On the same day, the Center confirmed that the Response due date was extended to March 31, 2017. The Response was filed with the Center on behalf of both Respondents on March 31, 2017.

On April 3, 2017, a supplemental filing was received from the Complainant. The Center acknowledged receipt of this submission on the same day.

The Center appointed Adam Taylor as the sole panelist in this matter on April 6, 2017. 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.

On April 7, 2017, the Panel issued the Administrative Procedural Order No. 1 stating that the Panel had determined that the disputed domain name <oleje-motul.info> should be added to the Complaint and inviting each of the parties to comment on a particular allegation of the other party and then to respond to any such submission by the other party.

On April 7, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name <oleje-motul.info>. On the same day, the Registrar transmitted by email to the Center its verification response confirming that the Second Respondent is listed as the registrant and providing the contact details.

The Complainant made supplemental filings on April 11, 14, 24 and 27, 2017. The Respondents made supplemental filings on April 12, 19, 26, 2017, and on May 2, 2017.

4. Factual Background

The Complainant is a French public limited company which has traded under the name “MOTUL” for more than 160 years. It supplies motor vehicle and industrial oils and lubricants to more than 100 countries. In 2014, its turnover was some 215 million euros.

The Complainant owns many registered trade marks for MOTUL including French trade mark No. 1712391 filed December 17, 1991, in classes 1 to 45.

The Second Respondent operates a motor vehicle servicing and parts business under the name “MOTOSERVICE – DEYL”, officially distributing the Complainant’s products in the Czechia via a website at “www.olej-servis.cz”. The First Respondent is the son and employee of the Second Respondent. (The Respondents are collectively referred to below as “the Respondent”, unless it is necessary to refer to them separately.)

The Respondent registered the disputed domain name <oleje-motul.info> on May 20, 2011 and the disputed domain name <motul.xyz> on August 19, 2015.

The disputed domain name <motul.xyz> has not been used for an active website.

The disputed domain name <oleje-motul.info> has been used for a website branded with the business name “Motoservice Deyl” beneath both the Complainant’s “Motul” logo and the Respondent’s “OLEJ-SERVIS.CZ” logo. Under the navigation menu, the Complainant’s name appear in bold, followed by a four-paragraph description of the Complainant’s business and then some further navigation links. The website offered the Complainant’s products for sale.

5. Parties’ Contentions

A. Complainant

A summary of the Complainant’s contentions is as follows:

The disputed domain name <motul.xyz> is identical to the Complainant’s trade mark.

The disputed domain name <oleje-motul.info> is confusingly similar to the trade mark as the word “oleje” means “oils” in Czech, thereby adding a word relevant to the Complainant’s area of business to the Complainant’s trade mark.

The Respondent is a non-exclusive distributor of the Complainant’s products and has not been authorised to register a domain name containing the Complainant’s mark.

The Respondent has used the website at the disputed domain name <oleje-motul.info> to sell the Complainant’s goods as well as non-oil products from other companies such as battery chargers, starters and testers.

The Respondent’s website does not comply with the reseller criteria set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“Oki Data”). It does not offer only the Complainant’s products and it does not mention accurately and prominently the link between the Complainant and the Respondent. Visitors will naturally think that they are visiting an official site of the Complainant.

A right to distribute a trade mark holder’s products does not create a right to use a name which wholly incorporates the trade mark.

The Respondent therefore lacks rights or legitimate interests in respect of the disputed domain names.

The disputed domain name <motul.xyz> constitutes passive holding in bad faith in accordance with the principles in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

The Respondent obviously knew that it corresponded to the Complainant’s trade mark yet registered the disputed domain name <motul.xyz> after having been asked by the Complainant to transfer other previously-registered domain names: <motul.cz>, <motul-oil.cz> and <motulevo.cz>.

The Respondent owns a separate website and does not need the disputed domain names in order to conduct its business.

The Respondent has repeatedly refused to transfer the disputed domain names despite repeated efforts by the Complainant to reach an amicable settlement. This is further evidence of bad faith.

B. Respondent

The Response is stated to be supplemental to the earlier Response filed by the previous representatives of the First Respondent in relation to the disputed domain name <motul.xyz>. A summary of the contentions in both documents is as follows:

The website for the disputed domain name <motul.xyz> is still in development. The Respondent intends to use this domain name “for his website via which he will be operating an e-shop of his products (as well as also the products of the Complainant)”.

The Respondent does not dispute that the disputed domain names are identical or confusingly similar to the Complainant’s trade marks.

However, the fact of the Complainant’s ownership of the trade marks does not of itself justify transfer of the disputed domain names.

For most of the period since 1997, the Respondent was the sole and exclusive distributor of the Complainant’s products in Czechia. Documents going back to at least 2005 evidence a long-lasting business relationship between the parties.

The disputed domain names were acquired by the Respondent in connection with those business activities. The disputed domain name <motul.xyz> was acquired to enhance distribution of the Complainant’s products in Czechia, in particular by establishment of a new e-shop.

The business relationship between the parties and the nature of the Respondent’s business constitute legitimate interest in the disputed domain names.

A confirmation document from the Complainant dated November 6, 2012, (“the 2012 Licence”) confirms that the Respondent is authorised to use the MOTUL trade mark for sale and advertising and does not forbid use as a domain name. The disputed domain names were acquired solely for sale and advertising purposes in connection with the Complainant’s products.

The disputed domain name <oleje-motul.info> has been used for bona fide offering of goods and is currently used for the promotion and sale of the Complainant’s products. The disputed domain name <motul.xyz> is currently being prepared for its intended use as an e-shop, as evidenced by a contact with the Respondent’s developer.

The Complainant was aware that the Respondent has been using <motul.cz> since 1997 and has never raised any objection.

The Respondent has not registered or used the disputed domain names in bad faith.

The Respondent did not register the disputed domain names for sale to the Complainant, to disrupt the business of a competitor or to prevent the Complainant from reflecting its trade mark in a domain name.

The Respondent is a long-term partner of the Complainant, not a competitor.

The disputed domain name <oleje-motul.info> contains, and the disputed domain name <motul.xyz> will contain, a home page link to the Complainant’s official website or that of the Complainant’s subsidiary.

The disputed domain name <oleje-motul.info> contains a Czech word and is therefore aimed at the Czech market, in which the Complainant does not directly operate.

The Respondent did not register the disputed domain names in order to create a likelihood of confusion with the Complainant’s mark. This is obvious from the nature of the long-lasting business relationship, from which both sides are benefitting. The disputed domain names are officially used for the exclusive sale of the Complainant’s goods and links to the Complainant’s website.

As regards Oki Data, the disputed domain names “may be used to sell a broader spectrum of products than the Complainant’s goods (for example via the e-shop)” but “within the product category of oils, lubricants and other similar products (to which the Complainant’s products belong), only the Complainant’s products are sold”.

As regards the relationship with the trade mark owner, the name of the Respondent’s business appears at the top of the homepage as well as “a name of the sold products (Motul)”. Further it is apparent from the contact information on the contact page that the websites are not official and there is also a link to the Complainant’s official websites.

The Complaint constitutes an attempt at reverse domain name hijacking.

C. Supplemental filings (insofar as admitted by the Panel)

The Complainant submitted that the 2012 Licence authorised the Respondent to use the Complainant’s trade mark only in the form of a logo and this did not extend to use of the trade mark within a domain name. The Respondent responded that use of the trade mark in the domain names was based on oral agreement between the Complainant and the Respondent and also that the Complainant “did not explicitly ban” the Respondent from registering domain names.

In relation to the Respondent’s assertion that the Complainant was aware of the Respondent’s registration and use of <motul.cz> since 1997, and had never objected, the Complainant produced a 2011 email and minutes of a meeting with the Respondent in 2014, both referring to the Complainant’s desire to obtain transfer of this domain name. In response, the Respondent claims that, after the 2011 email, the Complainant agreed orally to the Respondent’s retention of this domain name. The Respondent says it was not aware that the Complainant required transfer of this domain name at the 2014 meeting and that it had never seen or approved the content of the minutes. It adds that, if the above were the only responses to the use of <motul.cz> over the 15-year period since 1997, the Respondent’s use of the disputed domain names should be considered as a bona fide offering.

6. Discussion and Findings

A. Consolidation / Addition of Domain Name

Bearing in mind the principles governing the question of whether a further domain name can be added to a filed complaint and whether a complaint may be brought against multiple respondents as set out respectively in paragraphs 4.8 and 4.16 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), the Panel decided to add the disputed domain name <oleje-motul.info> and the Second Respondent, its registrant, to the Complaint.

The reasons for this decision were as follows:

1. It is not in dispute that the disputed domain names are under common control.

2. The Complainant has filed an Amended Complaint setting out its case in relation to both disputed domain names.

3. The Respondents have filed a joint Response to the Amended Complaint, making no objection to consolidation of the Respondents into the proceeding or the addition of the second disputed domain name.

4. In those circumstances, the Panel considers that consolidation of the Respondents and addition of the second disputed domain name to the Complaint are fair and equitable to all parties.

B. Supplemental Filings

Paragraphs 10 and 12 of the Rules in effect grant the Panel sole discretion to determine the admissibility of supplemental filings. Paragraph 10(d) states: “The Panel shall determine the admissibility, relevance, materiality and weight of the evidence”. Paragraph 12 states: “In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties”.

The principles which the Panel should apply in deciding whether or not to admit supplemental filings have been considered in many cases under the Policy. See, e.g., The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447. The principles include: that additional evidence or submissions should only be admitted in exceptional circumstances, such as where the party could not reasonably have known the existence or relevance of the further material when it made its primary submission; that if further material is admitted, it should be limited so as to minimize prejudice to the other party or the procedure; and that the reasons why the Panel is invited to consider the further material should, so far as practicable, be set out separately from the material itself.

Taking these principles into account, the Panel allowed part of the Complainant’s April 3, 2017 filing insofar as it responded to the 2012 Licence exhibited to the Response. The Panel also admitted the further submissions made by each party in under Procedural Order No. 1 together with the corresponding initial response by the other party - but only insofar as they addressed the specific issues on which comment had been requested. The Procedural Order invited only one response by each party to the other party’s statement. The Panel rejected a number of subsequent statements filed by both parties as these fell outside the scope of the Procedural Order. The Panel would add, however, that none of the disallowed material would have made any difference to the outcome of this case.

C. Identical or Confusingly Similar

It is not in dispute that the disputed domain name <motul.xyz> is identical, and the disputed domain name <oleje-motul.info> is confusingly similar, to the Complainant’s MOTUL trade mark. (As mentioned above, the word “oleje” is a descriptive term in Czech, meaning “oils”.)

The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.

D. Rights or Legitimate Interests

Paragraph 2.1 of WIPO Overview 2.0 explains the consensus view concerning the burden of proof regarding lack of rights or legitimate interests in UDRP cases:

“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […] If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”

For reasons explained in Section 6E below, the Respondent has not convinced the Panel that the Complainant has licensed or otherwise authorised the Respondent to register or use the disputed domain names.

For the purposes of paragraph 4(c)(i) of the Policy, there is no evidence of any use of the disputed domain name <motul.xyz> for a bona fide offering of goods or services, nor of any demonstrable preparations for such an offering . The Respondent relies on a statement of intended use of the disputed domain name as an e-shop in a contract with a web developer. In the Panel’s view, this is insufficient to constitute “demonstrable preparations” for an offering.

As regards the disputed domain name <oleje-motul.info>, the Respondent is using this for a website reselling the Complainant’s own goods. The consensus view of UDRP panels – as expressed in paragraph 2.3 of WIPO Overview 2.0 – is that to establish a bona fide offering of goods or services in such circumstances, the respondent must comply with certain requirements (referred to below as “the Oki Data criteria”):

“These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site’s accurately and prominently disclosing the registrant’s relationship with the trademark holder. The respondent must also not try to “corner the market” in domain names that reflect the trademark.”

The Complainant asserts that, in addition to resale of the Complainant’s goods, the Respondent has used the website at the disputed domain name <oleje-motul.info> to sell third party non-oil products such as battery chargers, starters and testers but does not provide supporting evidence.

The Respondent does not specifically deny the Complainant’s assertion. The Respondent makes some general statements to the effect that the website is used exclusively to sell the Complainant’s products. However, significantly, the Respondent specifically claims that, in relation to Oki Data criteria, the disputed domain names “may be used to sell a broader spectrum of products than the Complainant’s goods (for example via the e-shop)” but that “within the product category of oils, lubricants and other similar products (to which the Complainant’s products belong), only the Complainant’s products are sold”.

In the above circumstances, particularly given that the Respondent is specifically defending its right to do what the Complainant asserts it is doing, the Panel infers that the Respondent is indeed using, or has used, the website at the disputed domain name <oleje-motul.info> to sell non-trade mark goods outside the spectrum of goods supplied by the Complainant.

The Panel does not see why the Oki Data criteria should be qualified so as to enable the Respondent to claim rights or legitimate interests in using the Complainant’s trade mark to offer third party goods, simply because they are of a kind not supplied by the Complainant. Indeed, those third party goods are also vehicle accessories and therefore not that far removed from the spectrum occupied by the Complainant’s goods.

In any case, in the Panel’s view, the website at the disputed domain name <oleje-motul.info> falls foul of another of the Oki Data criteria in that it fails to accurately and prominently disclose the Respondent’s relationship with the Complainant. It is true that the homepage is branded at the top with the name of the Respondent’s business and the Respondent’s logo at the top right of the page. But the Panel considers that the effect of this is undermined by the combination of the Complainant’s logo at the top left of the page plus the fact that the main text on the homepage consists exclusively of a description of the Complainant and its business. There is no mention whatever of the distribution / reseller relationship between the parties. In the Panel’s view, the overall impression to users is that the website is somehow officially connected with the Complainant.

The Respondent relies on a link to the website of the Complainant or its subsidiary and to the Respondent’s contact details on the “contact us” page as demonstrating that the website is not official; however, neither of these features comes remotely close to rendering the website as an accurate and prominent disclosure of the parties’ relationship.

Accordingly, the Panel considers that the Respondent’s use of the disputed domain name <oleje-motul.info> cannot be said to be bona fide.

There is no evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply to either of the disputed domain names in the circumstances of this case.

The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain names and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.

E. Registered and Used in Bad Faith

For reasons explained in detail in section 6D above, the Panel is of the view that the website at the disputed domain name <oleje-motul.info> gives the impression of being an official site of the Complainant. For that reason, the Panel considers that the Respondent has registered and used the disputed domain name <oleje-motul.info> in bad faith in accordance with paragraph 4(b)(iv) of the Policy. The Panel considers that the Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trade mark.

This is compounded by the Respondent’s apparent use of the disputed domain name <oleje-motul.info> to also offer third party vehicle-related products for sale, albeit that they are not the exact kind of goods supplied by the Complainant.

While the disputed domain name <motul.xyz> has not yet been actively used, the initial Response made it clear that the First Respondent had registered this domain name “for his website via which he will be operating an e-shop of his products (as well as also the products of the Complainant)”. So it was clear that the Respondent intended also to use this disputed domain name to offer third party goods, not just those of the Complainant.

Furthermore, the Panel notes that the disputed domain name <motul.xyz> reflects the unadorned trade mark of the Complainant, excluding the domain name suffix. In the Panel’s view, even if the Respondent had registered and used this disputed domain name to offer only the Complainant’s goods, it is likely that this would amount to registration and use in bad faith on grounds of bad faith. See the discussion about resellers using domain names identical to trade marks in paragraph 2.3 of WIPO Overview 2.0 and also Eli Lilly and Company and Novartis Tiergesundheit AG v. Manny Ghumman / Mr. NYOB / Jesse Padilla, WIPO Case No. D2016-1698.

The Panel finds that the fact that the disputed domain name <motul.xyz> has remained dormant since registration in August 2015 does not prevent a finding of bad faith. See paragraph 3.2 of WIPO Overview 2.0, which explains the concept of passive holding in bad faith. The Panel considers that the disputed domain name <motul.xyz> constitutes a passive holding in bad faith in the circumstances outlined above, in particular the fact that it consists of the Complainant’s unadorned, distinctive trade mark and was registered for the acknowledged purpose of offering third party goods in addition to those of the Complainant.

Much of the argument in this case has turned on whether the Complainant authorised the Respondent to register and/or use the disputed domain names.

The Respondent initially relied on the 2012 Licence but, in response to the Complainant’s observation that this document only licensed use of the Complainant’s trade mark in logo form, it adjusted its position and claimed that registration of the disputed domain names including the trade mark had been approved by means of an oral agreement between the parties. At the same time, and somewhat inconsistently, the Respondent also argued that the Complainant “did not explicitly ban” the Respondent from registering the disputed domain names.

The Respondent also relied on the Complainant’s alleged acquiescence in its use of the domain name <motul.cz> since 1997 but the Complainant has produced documents dated 2011 and 2014 showing that the Complainant had sought transfer of this domain name or, at least, that the Complainant had not acquiesced in its registration / use.

Notwithstanding the undoubtedly long business relationship between the parties, the Respondent has supplied no evidence indicating that the Complainant either directly or indirectly authorised registration or use of either of the disputed domain names. Indeed, it would have been surprising had the Complainant authorised registration and/or use of the disputed domain names for a purpose which included sale of third party products, not just the Complainant’s own products.

The Panel concludes on balance that the Respondent has registered and is using the disputed domain names in bad faith and that the Complainant has therefore established the third element of paragraph 4(a) 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 names, <motul.xyz> and <oleje-motul.info>, be transferred to the Complainant.

Adam Taylor
Sole Panelist
Date: May 2, 2017