Valvoline Licensing and Intellectual Property LLC, VGP IPCo LLC v Karl
WIPO Case No. D2025-2905
•04-09-2025
| ARBITRATION AND MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Valvoline Licensing and Intellectual Property LLC, VGP IPCo LLC v. Karl
Schnurch, EdenMedia
Case No. D2025-2905
1. The Parties
The Complainants are Valvoline Licensing and Intellectual Property LLC, United States of America (“United States”), and VGP IPCo LLC, United States, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Karl Schnurch, EdenMedia, Seychelles.
2. The Domain Name and Registrar
The disputed domain name <valvolinecoupon.com> is registered with Key-Systems GmbH (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 22, 2025. On July 23, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 24, 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) and contact information in the Complaint. The Center sent an email communication to the Complainant on July 24, 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 July 28, 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 July 29, 2025. | In accordance with the Rules, paragraph 5, |
the due date for Response was August 18, 2025. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on August 19, 2025.
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The Center appointed Paula Bezerra de Menezes as the sole panelist in this matter on August 21, 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 are Valvoline Licensing and Intellectual Property LLC, and VGP IPCo LLC. [1]
Valvoline Global Operations is a worldwide leader in automotive and industrial solutions. It creates future- ready products and best-in-class services for partners around the globe. The company was established in
1866. Valvoline introduced the world’s first branded motor oil and claims its position as “The Original Motor Oil”. The company has been in operation for over 150 years. It is present in more than 140 countries and territories. Valvoline offers solutions for every engine and drivetrain, including high-mileage and heavy-duty vehicles, in more than 80,000 locations.
Valvoline Licensing and Intellectual Property LLC is a subsidiary of Valvoline Inc. Valvoline delivers quick, easy, trusted service at more than 1,900 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. The company completes more than 28 million services annually system- wide, from 15-minute stay-in-your-car oil changes to a variety of manufacturer-recommended maintenance services such as wiper replacements and tire rotations.
The Complainants own previous trademark registrations across various jurisdictions (per Annex 1 of the
Complaint) detailed below:
- International Registration VALVOLINE, registration 1661911, registered on April 1, 2022, in International class 37, to cover inter alia vehicle preventive maintenance services, namely, lubricating chassis; changing motor oil; changing oil and air f ilters, in the name of Valvoline Licensing and Intellectual Property LLC; - International Registration VALVOLINE, registration 568949A, registered on March 19, 1991, in International classes 1, to cover inter alia chemicals used in industry; 3, to cover inter alia cleaning, polishing, scouring and abrasive preparations; and 4, to cover inter alia industrial oils and greases, lubricants, dust absorbing, wetting and binding compositions, and fuels (including fuel for motors and engines), in the name of VGP IPCo LLC;
- German trademark VALVOLINE, registration 1016750, registered on April 14, 1981, in International classes 1, 2, 3, 4, 17, and 20, to cover chemical additives for fuels and motor oil, chemical agents for removing moisture, antifreeze starting aids, lubricants for motor vehicle transmissions, coolants and coolant additives for internal combustion engines; color additives for fuels and motor oil, rust and corrosion protection agents; paint and metal polishes for the maintenance and care of motor vehicles and their parts, or for use in connection with the maintenance and care of motor vehicles and their parts, care products for vehicle tires, agents for dissolving hardened seals: sealants; all of the aforementioned goods also as aerosol sprays; dip baskets made of plastic as an aid for cleaning machine and engine parts, in the name of VGP IPCo LLC;
- German trademark VALVOLINE, registration 962750, registered on September 13, 1977, in International
class 7, to cover inter alia f ilters for machines and engines, in the name of VGP IPCo LLC;
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- European Union trademark VALVOLINE, registration 009847773, registered on October 25, 2011, in
International classes 1, to cover inter alia chemicals used in industry; 4, to cover inter alia industrial oils and
greases; motor oils; lubricants and greases; dust absorbing; and 35, to cover inter alia retail services
and retail services through the Internet with the goods: chemicals used in industry, in the name of VGP
IPCo LLC; and
- United States trademark VALVOLINE, registration 3512482, registered on October 7, 2008, in International
class 37, to cover inter alia vehicle preventive maintenance services, namely, lubricating chassis; changing
motor oil; changing oil and air f ilters, in the name of Valvoline Licensing and Intellectual Property LLC.
The Complainants own domain names such as <valvoline.com>, <vioc.com>, as well as
<valvolineglobal.com>, per Annex 4 of the Complaint.
The disputed domain name was registered on August 22, 2019.
The Respondent was identified as Karl Schnurch, EdenMedia.
At the time of the filing of the Complaint, the disputed domain name resolved to a page displaying pay-per- click links (“PPC links”) with the texts “Buy this domain”, and the links “Valvoline Oil Change Coupons”, “Oil Change Coupons”, and “Valvoline Oil Change”.
5. Parties’ Contentions
A. Complainant
The Complainants contend that they have satisfied each of the elements required under the Policy for a transfer of the disputed domain name.
Notably, the Complainants contend that VALVOLINE has been one of the most recognized and respected premium consumer brands in the global automotive lubricant product and service industry. The mark VALVOLINE has been registered for many years. The brand has been known in the field of automotive, commercial and industrial lubricants, and automotive chemicals. When creating the disputed domain name, the Respondent has added the descriptive term “coupon” to the Complainants’ VALVOLINE trademark.
The disputed domain name is confusingly similar to the Complainants’ trademark. The addition of the term “coupon” serves to underscore and increase the confusing similarity between the disputed domain name and the Complainants’ trademark because such a term is closely linked and associated with the Complainants’ brand and trademark. “Coupon” is popularly known to be a discount voucher created for consumers by the Complainants and published on their website at: “ ( Annexes 5.2 and 5.4 of the Complaint). On the other hand, the generic Top-Level Domain (“gTLD”) “.com”, should be disregarded as it is a standard registration requirement.
The Complainants assert that the Respondent is not sponsored or affiliated with the Complainants in any way. The Complainants have not given permission to the Respondent to use the Complainants’ trademarks, including in domain names. Nor have the Complainants licensed, authorized, or permitted the Respondent to register domain names incorporating their trademark. Therefore, in the absence of any license or permission from the Complainants to use their trademark, there is no actual or contemplated bona fide or legitimate use of the disputed domain name.
The disputed domain name can only be taken as intending to cause confusion among Internet users as to the source of the disputed domain name, and thus, the disputed domain name must be considered as having been registered and used in bad faith pursuant to Policy 4(b)(iv), with no good faith use possible. More specifically, where the disputed domain name includes the entirety of the Complainants’ VALVOLINE
trademark with the widely used discount term “coupon”, and where the Complainants offer consumers the
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same named coupons via their website, there is no plausible good-faith reason or logic for the Respondent
to have registered the disputed domain name.
B. Respondent
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, for the transfer of the disputed domain name the Complainant must establish that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(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.
The Rules determine that if the Respondent does not comply with the time periods established nor any provision or requirements under paragraphs 14 (a) and 14 (b) of the Rules, the Panel shall proceed to a decision on the complaint and draw inferences as it considers appropriate.
Per paragraph 15(a) of the Rules, a panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The Panel has reviewed the case and found the following:
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 Complainants have 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. The Panel finds the name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.
The Panel has disregarded the gTLD in this case “.com”. See section 1.11 of the WIPO Overview 3.0, which states that the applicable gTLD is typically viewed as a standard registration requirement and, as such, disregarded under the first element confusing similarity.
Although the addition of other terms, here “coupon”, may bear on the assessment of the second and third elements, the Panel finds the addition of such a 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.
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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 Complainants have established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainants’ 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 Respondent defaulted and has failed to prove (i) before any notice of the dispute, its 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) being commonly known by the disputed domain name, even if it had acquired no trademark or service mark rights; or (iii) a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Additionally, the Respondent’s website features PPC links such as “Valvoline Oil Change Coupons”, “Oil Change Coupons” and “Valvoline Oil Change” . Panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users.
WIPO Overview 3.0, section 2.9.
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. However, 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 Panel also notes that other parties have started UDRP proceedings against the Respondent and the past decisions ordered that the Respondent’s domain names were transferred. See Haier US Appliance Solutions, Inc. DBA GE Appliance v. Karl Schnurch, EdenMedia, WIPO Case No. D2025-1945; Juniper Networks, Inc. v. Karl Schnurch, EdenMedia, WIPO Case No. D2024-4384; Wild Goose Holding Co, Inc., Wawa, Inc., The Wawa Foundation, Inc. v. Karl Schnurch, EdenMedia, WIPO Case No. D2024-3669; CWI, LLC v. Karl Schnurch, EdenMedia, WIPO Case No. D2023-4733; Eli Lilly and Company v. Karl Schnurch, EdenMedia, WIPO Case No. D2022-3826 (Annex 2 of the Complaint).
In the present case, the Panel notes that the circumstances at the time of the filing of the Complaint indicated that the Respondent engaged in a bad faith conduct by preventing the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, paragraph 4(b)(ii) of the Policy.
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The bad faith finding is further supported by previous decisions detailed above as an indicia of cybersquatting. The abusive registrations followed by transfer orders appear to characterize engagement in a pattern of bad faith conduct, per WIPO Overview 3.0, section 3.1.2.
Moreover, the Respondent has used the disputed domain name in connection with a PPC website, which indicates that the Respondent has intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation, or endorsement. Paragraph 4(b)(iv) of the Policy.
Having reviewed the available record, the Panel considers the following additional bad faith factors:
(a) the reproduction of the Complainants’ distinctive and longstanding and well reputed registered mark in its entirety with an additional term that is in fact regularly used by the Complainants; and
| (b) | the failure of the Respondent to submit a response or to provide any evidence of actual or |
contemplated good faith use.
Given the above, the Panel finds that in the circumstances of this case it is not possible to infer otherwise but that the Respondent cybersquatted and intentionally registered the disputed domain name and used the Complainants’ mark without authorization.
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 <valvolinecoupon.com> be transferred to one of the Complainants according to their choice.
/Paula Bezerra de Menezes/
Paula Bezerra de Menezes
Sole Panelist
Date: September 4, 2025
| Valvoline | |
| Licensing and Intellectual Property LLC remains the IP holding company for Valvoline Inc., and its affiliated entities. | VGP IPCo LLC is |
the IP holding company for VGP Holdings LLC and its affiliated entities. Pursuant to the transaction Valvoline Licensing and Intellectual Property LLC assigned the global IP assets, including trademark rights, applications and registration supporting the Global Products business to VGP IPCo, LLC and the recordations of assignment are in process.
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