Valvoline Licensing and Intellectual Property LLC v Zubair Hassan

WIPO Case No. D2025-0333

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Valvoline Licensing and Intellectual Property LLC v. Zubair Hassan

Case No. D2025-0333

1. The Parties

The Complainant is Valvoline Licensing and Intellectual Property LLC, United States of America (“United

States”), represented by CSC Digital Brand Services Group AB, Sweden.

The Respondent is Zubair Hassan, Pakistan.

2. The Domain Name and Registrar

The disputed domain name <valvolineprices.com> is registered with INWX GmbH & Co. KG (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 28, 2025.
On January 29, 2025, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On February 3, 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, My Domain Provider) and contact
information in the Complaint. The Center sent an email communication to the Complainant on February 3,
2025, providing the registrant and contact information disclosed by the Registrar, and inviting the
Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on

February 4, 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 February 5, 2025. In accordance with the Rules, paragraph
5, the due date for Response was February 25, 2025. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on February 26, 2025.

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The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on March 5, 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 Complainant is a subsidiary of Valvoline Inc., which delivers its services via 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. More than 28 million services are completed by the Complainant’s corporate group annually, including oil changes, manufacturer- recommended maintenance services, and tire rotations. The Complainant also has a line of “Valvoline” branded products, including motor oil, transmission fluid, grease and gear oil, and performance chemicals. On the social media site “Facebook”, the Complainant has over 90,000 followers and almost 90,000 “likes”, with almost 13,500 “check-ins”. The Complainant’s official website is found at “

The Complainant is the owner of a variety of registered trademarks for the VALVOLINE mark, including, for example, United States Registered Trademark Number 3512482 for the word mark VALVOLINE, registered on October 7, 2008, in Class 37. The Complainant is also the owner of United States Registered Trademark Number 3564645 for a device mark consisting of a stylized letter “V” outlined in silver, where the color red

appears in the trapezoid shape comprising the left vertical arm of the letter, the color blue appears in the trapezoid shape comprising the right vertical arm, and the color dark blue appears in the triangle shape comprising the base of the letter, registered on January 20, 2009 in Class 37.

The disputed domain name was registered on May 13, 2024. Little is known of the Respondent, which has
not participated in the administrative proceeding, although it appears to be a private individual with an
address in Pakistan. The website associated with the disputed domain name appears to be a “blog” style
site in which the alleged author is described as “Sarah, your valvoline [sic] guide […] Based in Atlanta”. A
side panel appearing on each page claims that “Sarah” and her three brothers are longtime Valvoline
employees and that the website is “a one-stop shop” for Valvoline knowledge. The website claims to provide
information about Valvoline prices, although in reality sets out a generalized range of prices, such as,
“69.99$ to 89.99$” for various services in a “Services Costs Guide” on the side panel. The said website
features a recognizable version or variation of the Complainant’s “V” device mark prominently at the top of
the front page as part of a “Valvolineprices” logo and banner which uses the Complainant’s corporate colors
of red, blue, and dark blue. At the very bottom of the home page, there is a hyperlink provided to the

Complainant’s official website in the text together with links to the Complainant’s social media sites.

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 the disputed domain name consists merely of its VALVOLINE trademark and the word “prices” appended, that closely relates to and describes its business, adding that the Respondent is using the disputed domain name to target the Complainant by using a modified version of the Complainant’s trademarked logo while offering unauthorized coupons for the Complainant’s services and promoting its own advertising services, suggesting that the Respondent intended the disputed domain name to be confusingly similar to the Complainant’s trademark. The Complainant asserts that content of the website at the domain name concerned has been considered to affirm confusing similarity in previous cases under the Policy where it appears prima facie that the Respondent seeks to target such trademark thereby.

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The Complainant asserts that there is no evidence to suggest that the Respondent is commonly known by the disputed domain name, as the registrant information does not resemble it, adding that the Respondent is not licensed by, sponsored by, or affiliated with the Complainant in any way, and that the Complainant has not given the Respondent permission to use its trademarks in any manner, including in domain names. The Complainant asserts that the disputed domain name directs Internet users to a website that attempts to pass itself off as an official site of the Complainant, using a modified version of the Complainant’s device mark, images of its service centers, stock images of similar services easily found online, an invitation to inquire about the Respondent’s “advertising services”, and unauthorized coupons for the Complainant’s services. The Complainant submits that the said website has purposely been designed to serve as a copy of the Complainant’s official site to deceive Internet users into believing that there is an association between said website and the Complainant, adding that such a case of impersonation, where the (non)-relationship with the Complainant is not properly disclosed, cannot be deemed fair use, and underscores the Respondent’s lack of rights and legitimate interests in the disputed domain name.

The Complainant points out that the disputed domain name is confusingly similar to the Complainant’s
trademark, and that the associated website seeks to establish a perceived affiliation with the Complainant to
further the Respondent’s commercial gain, adding that the use of the Complainant’s mark by someone with
no connection to the products suggests opportunistic bad faith. The Complainant contends that the
Respondent has created a likelihood of confusion with the Complainant’s mark by using a modified version of
the Complainant’s logo, copying images of the Complainant’s business locations and products, and then
offering unauthorized coupons and promoting its own advertising services. Finally, the Complainant notes
that the Respondent has ignored the Complainant’s attempts to resolve this dispute outside the

administrative proceeding and has not responded to its cease and desist communications.

B. Respondent

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

6. Discussion and Findings

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 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 entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other terms, here, the word “prices”, 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 mark 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 the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

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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.

Although the Respondent has not attempted to rebut the Complainant’s case, it is possible that the
Respondent might have argued that it is making fair use of the disputed domain name in order to publish a
site discussing the Complainant’s prices. For that reason, the Panel considers that it is appropriate to
examine the disputed domain name and associated website according to the core factors which panels
under the Policy typically consider on that topic. WIPO Overview 3.0, section 2.5. These consist of the
nature of the disputed domain name on its own, WIPO Overview 3.0, section 2.5.1, circumstances beyond
the disputed domain name itself including website content and any other overall facts and circumstances,
WIPO Overview 3.0, section 2.5.2, the issue of any commercial activity identified in terms of the disputed
domain name, WIPO Overview 3.0, section 2.5.3, and where appropriate, criticism sites,

WIPO Overview 3.0, section 2.6, or fan sites, WIPO Overview 3.0, section 2.7.

Considering first the disputed domain name on its own, it should be noted that where, as in this case, a
domain name consists of a trademark plus an additional term, panels have largely held that such
composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement
by the trademark owner. Such effective impersonation, and/or suggested sponsorship or endorsement, is
what the Complainant submits is occurring here, due to the composition of the disputed domain name.
However, contrary to the Complainant’s submissions, the Panel does not accept that the additional term
“prices” in the disputed domain name is a term specifically within the Complainant’s field of commerce as
such, other than in the sense that every trader fixes prices for its goods or services. Equally, the Panel does
not consider that the term, when coupled with the Complainant’s mark, necessarily impersonates the
Complainant or implies sponsorship or endorsement when considering the disputed domain name on its
own. On the contrary, the composition here includes one of those “in between” additional terms discussed in
the WIPO Overview 3.0, section 2.5.1 which requires further examination by the panel of the broader facts
and circumstances of the case – particularly including the associated website content – to assess potential

respondent rights or legitimate interests.

The Panel therefore turns to review the circumstances beyond the disputed domain name itself, notably the
content of the website associated with the disputed domain name. WIPO Overview 3.0, section 2.5.2. Here,
the Panel notes that the website content claims to relate to the Complainant’s business and prices, as
allegedly compiled by a character named “Sarah, your valvoline [sic] guide […] Based in Atlanta” who is said
to be a longtime employee of the Complainant along with her three brothers. At first glance, the website has
the appearance of being an official site of the Complainant, notably because of the prominent use of a
variant of the Complainant’s logo at the top of the home page. Although the side bar introduces the alleged
employee, “Sarah”, it must be said that this does not clearly signal that the website is unofficial in nature,
given that many trademark owners use similar “friendly face” characters to personalize their businesses for
the public, presumably on the basis that it is more appealing to present their operation, particularly if, as
here, it is a larger enterprise, in this more personal way. In fact, one has to read the content very carefully, in
order to have any sense that the website is wholly unofficial in nature. There is no disclaimer of affiliation
present, whether prominent or otherwise. The link to the Complainant’s own website does, admittedly, use

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the term “official site”, perhaps suggesting that what one is reading is unofficial content, but this is buried at although a careful reading of the text might indicate otherwise, the website associated with the disputed domain name appears to be designed to look like it is a website of the Complainant and carries some flavor of official sponsorship or endorsement by virtue of the alleged employee status of the character “Sarah”.

the bottom of the homepage text, requiring one to go through all of the first page to find it. Likewise, the links
to the Complainant’s social media sites add nothing by way of clarification, because an official site of the

Moving to the issue of commercial activity, WIPO Overview 3.0, section 2.5.3, the position presented on the website associated with the disputed domain name is ambiguous or rather murky to say the least. Discount coupons are presented, allegedly, for the Complainant’s services, but the Complainant says that these are

“unauthorized”. The Panel would have expected to hear more about these from the Complainant, as the such. Nevertheless, in the absence of a suitable explanation from the Complainant, the Panel does accept that there is something strange going on with the displayed coupons, in that the Complainant’s screenshot of the Respondent’s website is dated December 16, 2024, yet the two coupons shown have an expiration date of June 30, 2024 and would therefore have been unworkable for six months, even if genuine.
term “unauthorized” does not indicate whether the coupons are working reproductions of the Complainant’s
official coupons (for example, as would typically be found on coupon aggregator websites to the

While the presence of the coupons does not categorically demonstrate commercial activity, in that it is not apparent how the Respondent would benefit from the usage of any such coupon, whether expired or not, and the Complainant has not explained the commercial aspects, if any, to the Panel’s satisfaction, the Respondent’s direct solicitation of Internet users for its advertising services is another matter entirely. This strikes the Panel as a clear commercial activity designed in order that the Respondent may benefit unfairly from the notoriety of the Complainant’s brand and trademark. The use of the Complainant’s VALVOLINE trademark and notably the “V” device mark in the prominent logo, together with the “friendly face” employee character seem to be designed to attract Internet users who may believe that the Respondent’s website is sponsored or endorsed by the Complainant, unless they read it very carefully, ideally with attention to detail and considerable skepticism. Such Internet users are invited to contact the Respondent to discuss its advertising services. By using the Complainant’s name, logo, trademarks, and images of its service centers, the Respondent is benefitting from the additional Internet traffic that this would garner and is exposing the arriving Internet users to its own commercial advertising services (also, to some degree, under the guise of the Complainant’s mark). As far as the Panel is concerned, this use of the disputed domain name is misleading and could not be described as fair.

Finally on this topic, for completeness, the Panel will consider the presentation of the website associated with the disputed domain name in the context of being a fan site. Given the analysis thus far, it can be seen that the said website would not typically be characterized as such, however, it is appropriate to apply the relevant considerations in terms of WIPO Overview 3.0, section 2.7, because the Respondent states “Yes, I confess that my family and I are big fans of Valvoline […]” on the home page of the site. The WIPO Overview 3.0, section 2.7.1, provides that “[…] for purposes of assessing fair use under UDRP paragraph 4(c)(iii), a respondent’s fan site must be active, genuinely noncommercial, and clearly distinct from any official complainant site. Again, similar to claimed criticism sites, there are a number of UDRP cases in which the respondent claims to have a true fan site, but the panel finds that it is primarily a pretext for cybersquatting or commercial activity.” Here, the Panel has already noted the commercial activity on the website associated with the disputed domain name, i.e., the Respondent’s solicitation of Internet users for the provision of advertising services. Insofar as the website associated with the disputed domain name might have been considered as a fan site, it is neither genuinely noncommercial, nor clearly distinct from an official Complainant site. In any event, it appears to be a pretext for commercial activity.

As the website associated with the disputed domain name expresses no criticism of the Complainant, it is
unnecessary to view the disputed domain name or website content through the lens of the
WIPO Overview 3.0, section 2.6.

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The Panel concludes this section by noting for completeness that the Respondent did not take the opportunity to address any of the Complainant’s contentions regarding the website associated with the disputed domain name. Had the site been a genuine, albeit somewhat misguided, attempt to discuss the Complainant’s pricing in a noncommercial way, the Panel would have expected the Respondent to engage with the process and to defend its use of the disputed domain name. The fact that it has not done so tends to support the notion that the website associated with the disputed domain name is a pretext for commercial gain, as the Panel has already found in its analysis above and was never intended to make fair referential use of the Complainant’s mark.

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.

In the present case, the Panel considers that the analysis on this topic largely follows the approach in the preceding section. It is clear that the registration of the disputed domain name was made in the full knowledge and awareness of the Complainant and its trademark rights. The Complainant’s trademark is reproduced completely in the disputed domain name. The entire thrust of the website associated with the disputed domain name is to make reference to the Complainant’s business, and the Respondent has chosen to do this under the banner of the Complainant’s “V” device mark.

The website associated with the disputed domain name seems calculated to draw in Internet users who have an interest in the Complainant’s brand and appears to be worded in an attempt to skirt the line between what might be an official website of the Complainant, on the one hand, and what might look like an independent

noncommercial blog site on the other. The ambiguity which the Respondent has generated, including the advertising services. This could not be regarded as constituting registration and use of the disputed domain name in good faith.

presentation of the “friendly face” character (being something the Complainant itself might have done) seems
calculated in order that the Respondent can benefit commercially from any resulting confusion. Notably, the
Furthermore, the Panel finds that by using the disputed domain name, the Respondent has intentionally
attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion
with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of such website or of
a service on such website, namely the advertising service discussed above. This constitutes registration and

use in bad faith in terms of paragraph 4(b)(iv) of the Policy.

The Panel finds that the 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 <valvolineprices.com> be transferred to the Complainant.

/Andrew D. S. Lothian/
Andrew D. S. Lothian
Sole Panelist
Date: March 18, 2025