Valvoline Licensing and Intellectual Property LLC v Privacy Service Provided

WIPO Case No. D2022-1567

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Valvoline Licensing and Intellectual Property LLC v. Privacy Service Provided
by Withheld for Privacy ehf / Walt Legg

Case No. D2022-1567

1. The Parties

Complainant is Valvoline Licensing and Intellectual Property LLC, United States of America (“United States” or “USA”), represented by CSC Digital Brand Services Group AB , Sweden.

Respondent is Privacy Service Provided by Withheld for Privacy ehf, Iceland / Walt Legg, Singapore.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 29, 2022.

On April 29, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 29, 2022, 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 and contact information in the Complaint. The Center sent an email communication to Complainant on May 4, 2022, 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 May 9, 2022.

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 May 10, 2022. In accordance with the Rules, paragraph 5, the due

date for Response was May 30, 2022. Respondent did not submit any response. Accordingly, the Center

notified Respondent’s default on June 1, 2022.

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The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on June 15, 2022. 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, Valvoline Licensing and Intellectual Property LLC, is a global company in the automotive lubricant industry, and provides products and services mainly as a choice of drive-thru oil changes and automobile maintenance. Complainant was founded in 1866 by the inventor of the first lubricating oil and is

today a worldwide producer and distributor of premium branded automotive, commercial and industrial
lubricants, and automotive chemicals.

Complainant provides its products and services internationally in over 140 countries, operating over 1,500 instant oil change centers in the United States itself.

Complainant owns trademark registrations for the signs VALVOLINE and VALVOLINE BATTERIES, as can be found on the examples below:

International Date of

Registration No. Trademark Jurisdictions

Classes Registration

0053237	VALVOLINE	USA	04	May 29, 1906
0670453	VALVOLINE	USA	01	December 2, 1958
International
568949A	VALVOLINE	01, 03, 04	March 19, 1991
Trademark
009847773	VALVOLINE	European Union	01, 04, 35	October 25, 2011
BA BATTERY SYSTEM VALVOLINE
3623588	USA	09	May 19, 2009
PROFESSIONAL SERIES
BA BATTERY SYSTEM VALVOLINE
TMA1075909	Canada	02	March 26, 2020
PROFESSIONAL SERIES & DESIGN

Further, Complainant owns the domain name <valvoline.com> since March 4, 1995.

The disputed domain name was registered on October 28, 2021, and resolves to a webpage which presents a variety of advertisement links.

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5. Parties’ Contentions

A. Complainant

Complainant pleads that the disputed domain name is confusingly similar to its registered trademark

VALVOLINE, since it fully incorporates the referred trademark with the addition of the term “battery”.

Complainant affirms that Respondent creates a confusion, considering specially that the disputed domain

name uses the trademark VALVOLINE in its entirety with the addition of the generic term “battery”, as

consumers may believe that this domain name is linked to Complainant. Complainant also notes that the

term “battery” is inherently associated with its activities, since Complainant provides products and services

related to automotive maintenance, such as batteries.

Additionally, Complainant affirms that Respondent’s prior use of the disputed domain name to redirect it confirms that Respondent tries to create a similarity with Complainant’s trademark.

Therefore, according to Complainant, the disputed domain name presents a high risk of confusion to

consumers, who will likely believe it is linked with Complainant’s trademark VALVOLINE, fulfilling paragraph

4(a)(i) of the Policy and paragraph 3(b)(viii) and 3(b)(ix)(1) of the Rules.

In addition, Complainant states that Respondent does not have any rights or legitimate interests in respect of the disputed domain name, nor is Respondent commonly known by the disputed domain name. Further,

Respondent has not been authorized, or licensed to use Complainant’s trademark VALVOLINE as a domain

name nor is Respondent associated with Complainant.

Complainant observes that the disputed domain name is currently used to redirect internet users to a

website with links to third-party websites, some of which are direct competitors to Complainant’s business.

Therefore, Complainant presumes that Respondent is receiving pay-per-click profit from the links to third-party websites, which would not constitute bona fide use of the disputed domain name that would represent legitimate use or interest.

Furthermore, Complainant notes that Respondent previously used the disputed domain name to redirect

users to Complainant’s own website “vioc.com/battery-services/”, which led to the conclusion that

Respondent’s website was deliberately designed to attract Internet users to its website in the mistaken belief

that it was linked to or authorized by Complainant.

Complainant also notes that Respondent registered the disputed domain name on October 28, 2021, which
is significantly after Complainant registered VALVOLINE trademarks before the Intellectual Property Office of
Singapore, United States Patent and Trademark Office, Canadian Intellectual Property Office, World

Intellectual Property Organization, and European Union Intellectual Property Office, and significantly after

Complainant’s first use in commerce of its trademark in 1866.

This way, Complainant states that no legitimate use of the disputed domain name could be reasonably claimed by Respondent, thus paragraph 4(a)(ii) of the Policy and paragraph 3(b)(ix)(2) of the Rules has been fulfilled.

Moreover, Complainant argues that the trademark VALVOLINE is well-known internationally, and its products and services are provided with the referred trademark since 1866, and Respondent created the

disputed domain name by connecting the trademark VALVOLINE with the term “battery” – thus, Respondent

demonstrated knowledge and familiarity with Complainant’s brand and business.

Complainant also affirms that, considering the numerous trademark registrations for the trademark

VALVOLINE and its well-known international use and reputation, Respondent had knowledge or should have

known of Complainant’s rights to the trademark.

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Further, Complainant alleges that the disputed domain name was registered by Respondent shortly after the

announcement of a partnership between Complainant’s business and “Battery Innovation Center”, which

would suggest that Respondent aimed to gain profit by using the publicity that this fact generated.

Complainant affirms that the use of the disputed domain name to increase traffic for the pay-per-click links

posted to Respondent’s website would indicate that Respondent is obtaining profit from the use of the

disputed domain name, which, in the present circumstances, would also indicate bad faith.

Finally, Complainant indicates that Respondent has not responded to any of its attempts to resolve this dispute outside of the administrative proceeding.

Thus, the requirements for the identification of a bad faith use of the domain name would have been fulfilled, which constitutes registration and use in bad faith pursuant to paragraph 4(b)(iv) of the Policy.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

To succeed in a UDRP complaint, Complainant must demonstrate that all the elements listed in paragraph 4(a) of the Policy have been satisfied, as following:

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

(ii)       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.

The burden of proving these elements is upon Complainant.

Respondent had 20 days to submit a response in accordance with paragraph 5(a) of the Rules and failed to do so. Paragraph 5(f) of the Rules establishes that if a respondent does not respond to the complaint, in the

absence of exceptional circumstances, the panel’s decision shall be based upon the complaint.

A. Identical or Confusingly Similar

Complainant has duly proven that it owns prior registered and unregistered rights for the trademark

VALVOLINE, and that the disputed domain name is constituted by the trademark VALVOLINE in its entirety

with the addition of the word “battery”.

The addition of the word “battery” does not prevent a finding of confusing similarity with the trademark

VALVOLINE, as the trademark VALVOLINE remains recognizable.

Thus, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademarks, and

so the requirement of the first element of paragraph 4(a) of the Policy is satisfied.

B. Rights or Legitimate Interests

The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third

Edition (“WIPO Overview 3.0”) as follows: “[w]hile 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

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domain name may result in the often impossible 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. If the respondent fails to come forward with such relevant evidence, the

complainant is deemed to have satisfied the second element.”

In this case, noting the facts and contentions listed above, the Panel finds that Complainant has made out a prima facie case showing that Respondent lacks rights or legitimate interests in the disputed domain name,

so the burden of production shifts to Respondent. As Respondent has not replied to Complainant’s

contentions, the Panel has considered Complainant’s unrebutted prima facie case to be sufficient to

demonstrate that Respondent has no rights or legitimate interests in the disputed domain name
<valvolinebattery.com>.

Furthermore, Respondent has not used the disputed domain name in the context of a bona fide that could demonstrate legitimate interests, since the evidence shows that the disputed domain name (i) priorly

redirected users to Complainant’s own website “ which indicates that the

disputed domain name was designed to attract Internet users to its website in the mistaken belief that it is
linked to or authorized by Complainant; (ii) is currently used to redirect Internet users to a website with links
to third-party websites, which suggests that Respondent is obtaining profit from the disputed domain name
website through pay-per-click links. Both uses of the disputed domain name were duly proven on Annex 3 to
the Complaint.

Therefore, the Panel finds that the requirement of the second element of paragraph 4(a) of the Policy is also satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists a number of circumstances that, without limitation, are deemed evidence of registration and use of a domain name in bad faith.

Respondent has registered the disputed domain name that fully incorporates Complainant ’s trademark

VALVOLINE, plus the addition of the word “battery”. The Panel finds that it is duly demonstrated that

Respondent was aware of Complainant’s rights to the trademark VALVOLINE at the time of the registration –

as Complainant enjoys a worldwide reputation with the use of the referred trademarks.

With that in sight, Panel finds that Respondent registered the disputed domain name with the intention of

attracting Internet users and consumers in search of authentic VALVOLINE services – especially when
considering that the disputed domain name used to redirect to Complainant ’s website situated at

“ demonstrating that Respondent was aware of Complainant´s activities and

reputation.

Moreover, Panel finds that the word “battery” that accompanies the trademark VALVOLINE in the disputed

domain name consists of a reference to the services provided by Complainant, which indicates that the
unauthorized use of the trademark VALVOLINE in the disputed domain name will most likely be of bad faith.

This Panel concludes that the registration of the disputed domain name in the present circumstances allows a finding of bad faith registration and use, considering that it was duly proven that Respondent is using the

disputed domain name to divert Internet users to third-party websites via pay-per-click links – which include
links that refer to Complainant’s business (see Annex 03).

As discussed in International Business Machines Corporation v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico (WIPO Case No. D2021-0633), the use of the disputed domain name to dispose pay-per-click links which include links related to Complainant should be seen as an indicative of bad faith:

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“The Domain Name has been used for competing commercial pay-per-click links which is confusing

and disruptive in that visitors to the site might reasonably believe services offered on that site are time of registration. Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the

connected to or approved by the Complainant. Reference to the Complainant or its mark in pay-per-
click links on the site attached to the Domain Name, and incorporation of the IBM Mark in the Domain

Complainant’s trade mark as to the source, sponsorship, affiliation or endorsement of the website or

services offered on it. This is also likely to disrupt the business of the Complainant. Further, using the

Domain Name to disseminate malware indicates bad faith and constitutes a disruption of the

Complainant’s business.”

Finally, it should be noted that the failure of Respondent to respond to Complainant ’s contentions (via cease

and desist letter or this administrative procedure) can be seen as a sign of bad faith, as concluded by the

Panel in Reed Smith LLP v. Reed Smith Capital (WIPO Case No. D2014-2123):

“Complainant sent Respondent a series of letters, requesting that Respondent cease and desist the

use of the disputed domain name, as the disputed domain name was confusingly similar to

Complainant’s REED SMITH mark. Respondent failed to reply to any of these demand letters.

Complainant filed a Complaint in this matter, alleging that the disputed domain name was confusingly

similar to Complainant’s REED SMITH mark, that Respondent had no rights or legitimate interests in

respect of the disputed domain name and that the disputed domain name was registered and is being used in bad faith. Respondent failed to reply to this Complaint. The Panel notes that paragraph 14(b)

of the Rules gives the Panel discretion to draw such inferences from Respondent’s default as it

considers appropriate. Accordingly, the Panel finds that Respondent has registered and is using the

disputed domain name in bad faith.”

Panel finds that the fact that Respondent did not respond to any of Complainant ’s contentions together with

other circumstances of the case, such as the use of the disputed domain name to expose pay-per-click links
to obtain profit, could be regarded as bad faith.

In light of the above, the Panel finds that the disputed domain name has been registered and is being used in bad faith. Therefore, the requirement of the third element of paragraph 4(a) of the Policy is satisfied.

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 <valvolinebattery.com> be transferred to Complainant.

/Gabriel F. Leonardos/

Gabriel F. Leonardos

Sole Panelist
Date: July 5, 2022