Valvoline Licensing and Intellectual Property LLC v ashley casey

WIPO Case No. D2024-5045

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Valvoline Licensing and Intellectual Property LLC v. ashley casey,
pulivarthigroupcareers

Case No. D2024-5045

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 ashley casey, pulivarthigroupcareers, United States.

2. The Domain Name and Registrar

The disputed domain name <viocrecruit.com> (the “Disputed Domain Name”) is registered with Hostinger

Operations, UAB (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 6, 2024. On December 9, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 10, 2024, 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 (Domain Admin, Privacy Protect, LLC (PrivacyProtect.org)) and contact information in the Complaint. The Center sent an email communication to Complainant on December 12, 2024, 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 December 12, 2024.

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 December 13, 2024. In accordance with the Rules, paragraph 5, the due date for Response was January 2, 2025. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 17, 2025.

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The Center appointed Richard W. Page as the sole panelist in this matter on January 22, 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

Complainant is a subsidiary of Valvoline Inc. which delivers quick, easy, trusted service at more than 2,000 franchised and company-operated service centers across the United States and Canada under the Valvoline Instant Oil Change, Valvoline Express Care, and Great Canadian Oil Change brands. Complainant completes more than 28 million services annually system-wide, from 15-minue stay-in-your-car oil changes to a variety of manufacturer-recommended maintenance services such as wiper replacements and tire rotations.

Complainant is the owner of the VALVOLINE INSTANT OIL CHANGE trademark and its acronym trademark VIOC. Complainant’s trademarks shall be collectively referred to herein as the “VIOC Marks”. Complainant is the owner of numerous trademark registrations for the VIOC Marks across various jurisdictions, including without limitation the following:

United States Patent and Trademark Office (“USPTO”) Registration No. 5,800,838 registered July 9, 2019, as VIOC in International Class 37; and

USPTO Registration No. 1531277 registered March 21, 1989, as VALVOLINE INSTANT OIL CHANGE in

International Class 37.

Complainant has spent a considerable amount of time and money protecting its intellectual property rights.

Complainant has a strong Internet presence through its primary website at its domain name <valvoline.com> as well as <vioc.com> and its various social media platforms including Facebook, Instagram and LinkedIn.

According to Similarweb.com, Complainant’s website located at its primary domain name <valvoline.com> received more than 247,000 total visits during September 2024 and is ranked No.103 in its industry category. The domain name <vioc.com> received more than 1.9 million total visits during September 2024 and is ranked No. 167 in its industry category.

The Disputed Domain Name was registered on September 23, 2024, resolves to a website which has no content, and is entered into a mail exchange (MX) through which emails were used for a fraudulent phishing scheme.

5. Parties’ Contentions

A. Complainant

Complainant contents that Respondent has added the generic, descriptive term “recruit” to the VIOC Mark, thereby making the Disputed Domain Name confusingly similar to the VIOC Marks. The fact that such term is closely linked and associated with Complainant’s brand and business only serves to underscore and

increase the confusing similarity between the Disputed Domain Name and the VIOC Marks.

Complainant submits that Respondent in not sponsored by or affiliated with Complainant in any way. Complainant has not given Respondent permission to use the VIOC Marks any manner, including in domain names. Complainant has not licensed, authorized, or permitted Respondent to register domain names incorporating the VIOC Marks.

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Complainant further submits that there is no evidence, including the WhoIs record for the Disputed Domain
Name, that suggests Respondent is commonly known by the Disputed Domain Name.

Complainant further submits that Respondent’s use of the Disputed Domain Name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent is using a confusingly similar domain name to create the impression that Respondent’s website and email are

authorized and administered by Complainant. Complainant further submits that Respondent’s sole purpose attempting to pass itself off as Complainant in an attempt to “phish” personal information from Complainant’s customers, which is not a bona fide offering of goods or services or a legitimate use of the Disputed Domain Name.

is to send emails which have the appearance of coming from Complainant’s recruiting team. The emails
sent from the domain “@viocrecruit.com” (in particular from […]@viocrecruit.com) sought to obtain personal
and sensitive information via questionnaire, as part of Respondent’s fraudulent recruitment scam.
Respondent’s emails go so far as to include the name of Complainant’s senior recruiter as well as
Complainant further submits that Respondent is using the Disputed Domain Name to redirect Internet users
to a website that resolves to a blank page and lacks content. Respondent has failed to make use of this
Disputed Domain Name’s website and has not demonstrated any attempt to make legitimate use of the

Disputed Domain Name or the website.

Complainant alleges that Respondent registered the Disputed Domain Name on September 23, 2024, which
is significantly after Complainant filed for registration of its VIOC Marks with the USPTO, Canadian
Intellectual Property Office, and WIPO, and also significantly after Complainant’s first use in commerce of the

VIOC Marks in 1986.

Complainant further alleges that Respondent registered the Disputed Domain Name significantly after
Complainant’s registration of its <vioc.com> domain name on January 17, 1997.

Complainant further alleges that Respondent had actual and constructive knowledge of Complainant’s rights in the VIOC Marks at the time it registered the Disputed Domain Name.

Complainant further alleges that the VIOC Marks are known internationally, with trademark registrations
across numerous countries. Complainant has marketed and sold its goods and services using its
VALVOLINE mark since 1866 and using the VALVOLINE INSTANT OIL CHANGE and VIOC Marks since
1986, all of which was well before Respondent’s registration of the Disputed Domain Name.

Complainant further alleges that, given the fraudulent phishing scheme, it is not possible to conceive of a plausible situation in which Respondent would have been unaware of the VIOC Marks.

Complainant contends that it has satisfied each of the three elements required under the Policy for a transfer of the Disputed Domain Name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.”

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Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the
Panel will review the evidence proffered by Complainant to verify that the three essential elements of
the claims are met. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition
(“WIPO Overview 3.0”), section 4.3.

Paragraph 4(a) of the Policy directs that Complainant must prove each of the following three essential elements:

i)         that the Disputed Domain Name registered by Respondent is identical or confusingly similar to the

VIOC Marks in which Complainant has rights;

ii)	that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
iii)	that the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

WIPO Overview 3.0, section 1.2.1 states that registration of a trademark is prima facie evidence of

Complainant having enforceable rights in the VIOC Marks.

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.

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 VIOC Marks and the Disputed Domain Name. WIPO Overview 3.0, section 1.7.

The entirety of the VIOC mark is reproduced within the Disputed Domain Name. Accordingly, the Disputed Domain Name is confusingly similar to the VIOC mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other terms, here “recruit” may bear on assessment of the second and third
elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between
the Disputed Domain Name and the VIOC Marks for the purposes of the Policy. WIPO Overview 3.0,

section 1.8.

The Panel finds 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 Respondent may demonstrate rights or legitimate interests in the Disputed Domain Name.

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed 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

Disputed 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 Disputed Domain Name,
without intent for commercial gain to misleadingly divert consumers or to tarnish the VIOC Marks.

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

Having reviewed the available record, the Panel finds Complainant has established a prima facie case that 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.

Panels have held that the use of the Disputed Domain Name for illegal activity, here claimed as using for
sending emails for phishing and passing off can never confer rights or legitimate interests on Respondent.

WIPO Overview 3.0, section 2.13.1.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of the Disputed Domain Name:

(i) circumstances indicating that you [Respondent] have registered or you have acquired the Disputed
Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain
Name registration to Complainant who is the owner of the VIOC Marks or to a competitor of Complainant, for
valuable consideration in excess of your documented out-of-pocket costs directly related to the Disputed
Domain Name; or

(ii) you [Respondent] have registered the Disputed Domain Name in order to prevent the owner of the VIOC Marks from reflecting them in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you [Respondent] have registered the Disputed Domain Name primarily for the purpose of disrupting the

business of a competitor; or

(iv) by using the Disputed Domain Name, you [Respondent] have intentionally attempted to attract, for
commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion
with the VIOC Marks as to the source, sponsorship, affiliation, or endorsement of your website or location or
of a product on your website or location.

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 the Disputed Domain Name in bad faith.

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

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Panels have held that the use of the Disputed Domain Name for illegal activity, here, claimed as using for sending emails for phishing and passing off constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds Respondent’s registration and use of the Disputed Domain Name constitutes bad faith under the Policy.

In addition, the Panel finds that Respondent knew or should have known of Complainant’s rights in the VIOC except to trade on the goodwill and reputation of Complainant.

Marks at the time Respondent registered the Disputed Domain Name. WIPO Overview 3.0, section 3.2.2.

The Panel finds that Complainant has established the third element 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 Name <viocrecruit.com> be transferred to Complainant.

/Richard W. Page/
Richard W. Page
Sole Panelist
Date: February 3, 2025