Valvoline Licensing and Intellectual Property LLC v Wesley Karr

WIPO Case No. D2022-4796

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Valvoline Licensing and Intellectual Property LLC v. Wesley Karr,
DomainPower

Case No. D2022-4796

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 Wesley Karr, DomainPower, United States.

2. The Domain Name and Registrar

The disputed domain name <valvoine.com> is registered with Dynadot, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 14,

2022. On December 14, 2022, the Center transmitted by email to the Registrar a request for registrar
verification in connection with the disputed domain name. On December 15, 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 December 16, 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 December 21, 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 December 27, 2022. In accordance with the Rules, paragraph 5, the due date for Response was January 16, 2023. Respondent did not submit any response. Accordingly, the

Center notified Respondent’s default on January 19, 2023.

page 2

The Center appointed Lorelei Ritchie as the sole panelist in this matter on January 24, 2023. 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, together with its corporate affiliates (collectively “Complainant”) is a multinational company,

based in the United States. For over a century prior to the registration of the disputed domain name, address of record. Complainant further owns the registration for the domain name <valvoline.com> (registered March 4, 1995). Complainant uses the URL associated with this domain name to communicate with online users regarding its oil lubrication and other products offered under the VALVOLINE mark.

Complainant has offered oil lubricant and related goods and services under the mark VALVOLINE.
Complainant is the owner of several registrations for the VALVOLINE mark, including, among others,

The disputed domain name was registered on November 14, 2011. The URL associated with the disputed

domain name resolves to a Pay-Per-Click (“PPC”) site, which advertises third-party goods and services that

compete with those offered by Complainant under its VALVOLINE mark. Respondent has no affiliation with

Complainant, nor any license to use its marks.

5. Parties’ Contentions

A. Complainant

Complainant contends that (i) the disputed domain name is identical or confusingly similar to Complainants’

trademarks, (ii) Respondent has no rights or legitimate interests in the disputed domain name; and
(iii) Respondent registered and is using the disputed domain name in bad faith.

Specifically, Complainant contends that it owns registrations for the VALVOLINE mark for, among other things, oil lubrication and related services.

Complainant further contends that its VALVOLINE mark is well-known internationally, particularly in the
United States where Respondent lists an address of record. Complainant contends that the disputed domain

name consists solely of Complainant’s VALVOLINE mark, with only a deliberate misspelling, leaving out the second “l”. Complainant contends that Respondent lacks rights or legitimate interest in the disputed domain

name, and rather has registered and is using it in bad faith, having simply acquired the disputed domain

name for Respondent’s own commercial gain. Complainant further alleges that Respondent has engaged in

a pattern of conduct that establishes bad faith under the UDRP.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel must first determine whether the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the

Policy. The Panel finds that it is. The disputed domain name directly incorporates Complainant’s

VALVOLINE mark, but with a clear and obvious misspelling.

page 3

This indicates a practice commonly known as “typosquatting”, where a domain name registrant deliberately

registers common misspellings of a well-known mark in order to divert consumer traffic. Other UDRP panels

have routinely found typosquatted domain names like these to be “confusingly similar” for purposes of a

finding under the UDRP. See Edmonds.com, Inc. v. Yingkun Guo, dba This domain name is 4 sale, WIPO
Case No. D2006-0694; Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO
Case No. D2001-0489; see also, Credit Karma, Inc. v. Domain Admin, WhoIs Privacy Corp., WIPO Case
No. D2017-0194.

The Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights for purposes of paragraph (4)(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel next considers whether Complainant has shown that Respondent has no “rights or legitimate interest”, as must be proven to succeed in a UDRP dispute. Paragraph 4(c) of the Policy gives examples

that might show rights or legitimate interests in a domain name. These examples include: (i) use of the

domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that

respondent has been “commonly known by the domain name”; or (iii) “legitimate noncommercial or fair use

of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the

trademark or service mark at issue”.

No evidence has been presented to the Panel that might support a claim of Respondent’s rights or legitimate

interests in the disputed domain name, and Respondent has no license from, or other affiliation with,

Complainant. Moreover, the typosquatting nature of the disputed domain name reflects the Respondent’s

lack of rights or legitimate interests, given the implied intent behind typosquatting to mislead unsuspecting name as compared to the trademark.

Therefore, the Panel finds that Complainant has provided sufficient evidence of Respondent’s lack of “rights

or legitimate interests” in accordance with paragraph 4(a)(ii) of the Policy which Respondent has not

rebutted.

C. Registered and Used in Bad Faith

There are several ways that a complainant can demonstrate that a domain name was registered and used in

bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where “by using

the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to

[respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant’s

mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or of a

product or service on [the] web site or location”. As noted in Section 4 of this Panel’s decision, Respondent

has used the disputed domain name to resolve to a PPC site, which advertises third-party goods and

services that compete with those offered by Complainant under its VALVOLINE mark. Hence, Respondent

is trading on the goodwill of Complainant’s trademarks to attract Internet users, presumably for Respondent’s

own commercial gain.

The Panel further notes that several UDRP panels have found that Respondent has engaged in bad faith
registration and use of other globally known marks. See Williams-Sonoma, Inc. v. Wesley Karr, Power Click,
WIPO Case No. D2022-3915; DO HOUSE Inc. v. Super Privacy Service LTD c/o Dynadot / Wesley Karr,
WIPO Case No. D2022-2451; Project Management Institute, Inc. v. Super Privacy Service LTD / Wesley
Karr, WIPO Case No. D2022-2259; AB Electrolux v. Wesley Karr, Power Click, WIPO Case

No. D2021-0870.

The Panel also takes note of Respondent’s apparent current ownership of the registration for several other

domain names, including <addidas.us>, <britax.us>, <colgate.us>, <hp-support.us>, and <huffingtonpost.us>. This also evidences bad faith in accordance with paragraph 4(b)(ii).

page 4

Therefore, the Panel finds sufficient evidence that Respondent registered and used the disputed domain name in bad faith for purposes of paragraph (4)(a)(iii) 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 <valvoine.com> be transferred to Complainant.

/Lorelei Ritchie/

Lorelei Ritchie

Sole Panelist
Date: February 7, 2023