Valvoline Licensing and Intellectual Property LLC and VGP IPCo LLC v; Adam Abdullahi

WIPO Case No. DAI2025-0039

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Valvoline Licensing and Intellectual Property LLC and VGP IPCo LLC v.
Adam Abdullahi

Case No. DAI2025-0039

1. The Parties

The Complainants are Valvoline Licensing and Intellectual Property LLC, and VGP IPCo LLC, United States of America, represented by CSC Digital Brand Services Group AB, Sweden.

The Respondent is Adam Abdullahi, Nigeria.

2. The Domain Name and Registrar

The disputed domain name <valvoline.ai> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 1, 2025. connection with the disputed domain name. On August 4, 2025, 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 (Redacted For Privacy, Privacy service provided by Withheld for Privacy ehf) and contact information in the Complaint. The Center sent an email communication to the Complainants on August 5, 2025, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainants filed an amended Complaint on August 8, 2025.

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 August 11, 2025. In accordance with the Rules, paragraph
5, the due date for Response was August 31, 2025. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on September 5, 2025.

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The Center appointed Rodrigo Azevedo as the sole panelist in this matter on September 11, 2025. 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 Complainants (hereinafter referred to together as “the Complainant”) are Valvoline Licensing and Intellectual Property LLC, and VGP IPCo LLC, entities established in the United States that are owners of rights to the VALVOLINE trademark, used in conjunction with leading automotive, commercial and industrial lubricants, and automotive chemicals.

The Complainant owns trademark registrations for VALVOLINE in numerous jurisdictions, including the and 1064261 (filed on September 27, 1976 and registered on April 26, 1977).

The Complainant also owns and operates the domain name <valvoline.com>, which was registered on

March 4, 1995.

The disputed domain name was registered on February 19, 2025.

The disputed domain name used to resolve to website where the disputed domain name was offered for sale for USD 125,000. Currently the disputed domain name resolves to an inactive page.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. Notably, the Complainant contends that:

(i) The disputed domain name is identical or confusingly similar to the Complainant’s trademark. The incorporates the mark in its entirety without any additional distinguishing elements. The addition of the country-code Top-Level Domain (“ccTLD”) “.ai” does not prevent a finding of confusing similarity.

(ii) The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant
asserts that the Respondent is not affiliated with or authorized by the Complainant to use the VALVOLINE
mark. The Respondent has not been commonly known by the disputed domain name and has not acquired
any trademark or service mark rights in the name. The Complainant adds that the Respondent is using the
disputed domain name to display a parking page or to offer it for sale, which does not constitute a bona fide

offering of goods or services.

(iii) The disputed domain name was registered and is being used in bad faith. The Complainant submits that
the Respondent registered the disputed domain name with knowledge of the Complainant’s well-known
mark, seeking to take unfair advantage of its reputation. The Respondent’s use of a privacy service, the
redirection to a registrar’s landing page where the disputed domain name was offered for sale, and the
passive holding of the disputed domain name are presented as further indications of bad faith. The

Complainant also notes the Respondent’s failure to respond to cease-and-desist letters.

B. Respondent

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

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6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, a complainant shall prove the following three elements:

(i) the disputed 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 disputed domain name; and

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

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0“), section 1.7.

The Complainant holds numerous trademark registrations for VALVOLINE dating as early as 1906. Based on the available record, the Panel finds the Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1.

The disputed domain name fully incorporates the Complainant’s trademark VALVOLINE, with the addition of the ccTLD extension “.ai”.

It is well established that the addition of a ccTLD (such as “.ai”) is typically disregarded when determining whether a domain name is confusingly similar to a complainant’s trademark as such is viewed as a standard registration requirement. WIPO Overview 3.0, section 1.11.1.

Therefore, the Panel finds the disputed domain name is confusingly similar to the Complainant’s trademark and that the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

The Panel finds no indication that the Respondent is commonly known by the disputed domain name.

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The Complainant has asserted that the Respondent is not an authorized representative, nor has obtained any permission for registering the disputed domain name. The Panel finds that the nature of the disputed domain name, being identical to the Complainant’s trademark, and the evidence brought by the Complainant

that it has recently been offered for sale in an amount that far exceeds the Respondent’s out-of-pocket
expenses in registering it, indicate an awareness of the Complainant and its trademark and an intent to take

unfair advantage of such, which does not support a finding of any rights or legitimate interests.

Based on the available record, the Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular but without limitation, that if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

The disputed domain name comprises the distinctive trademark VALVOLINE in its entirety, without any modification or additional term. According to the WIPO Overview 3.0, section 3.1.4, UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a widely known trademark by an unaffiliated entity can by itself create a presumption of bad faith.

In fact, when the disputed domain name was registered in 2025, the VALVOLINE trademark was already well known and directly connected with the Complainant’s products worldwide for many decades.

The Panel concludes that it is unlikely that the Respondent was not aware of the Complainant’s trademark and that the registration of the disputed domain name was a mere coincidence. Especially considering that the Complainant brought evidence that the disputed domain name has recently been offered for sale in an

amount that far exceeds the Respondent’s out-of-pocket expenses in registering it, thus recognizing the

value of said expression/brand, directly associated with the Complainant.

At the time of the Decision, the disputed domain name does not resolve to any active website. However,
UDRP panels have frequently found that the apparent lack of so-called active use of the domain name
(passive holding) does not prevent a finding of bad faith. See WIPO Overview 3.0, section 3.3; Telstra
Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; and Polaroid Corporation v.
Jay Strommen, WIPO Case No. D2005-1005.

The non-collaborative posture of the Respondent, i.e., (a) not presently using the disputed domain name, (b) not indicating any intention to use it, and (c) not at least providing justifications for the use of a third party trademark, when notified by the Complainant and during the present proceeding, certainly cannot be used in benefit of the Respondent in this Panel’s opinion, which circumstances, together with (d) the lack of any plausible justification for the adoption of the term “valvoline” by the Respondent and with (e) the recent offer for sale the disputed domain name in an amount that far exceeds the Respondent’s out-of-pocket expenses in registering it, are enough in this Panel’s view to characterize bad faith registration and use in the present case.

Therefore, having reviewed the record, the Panel finds the registration and use of the disputed domain name constitutes bad faith under the Policy.

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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 <valvoline.ai> be transferred to the Complainant.

/Rodrigo Azevedo/
Rodrigo Azevedo
Sole Panelist
Date: September 28, 2025