WIPO Domain Name Decision D2018-1486 for valvolinecarcam.com
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Valvoline Licensing and Intellectual Property LLC v. jau Khan Case No. D2018-1486 1. The Parties
Complainant is Valvoline Licensing and Intellectual Property LLC of Lexington, Kentucky, United States of America ("United States"), represented by CSC Digital Brand Services Group AB, Sweden.
Respondent is jau Khan of Kuala Lumpur, Malaysia. 2. The Domain Name and Registrar
The disputed domain name is registered with TurnCommerce, Inc. DBA NameB (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 4, 2018. On July 4, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 5, 2018, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 July 11, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 31, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on August 1, 2018.
The Center appointed Felipe Claro as the sole panelist in this matter on August 14, 2018. 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
1. Complainant, Valvoline Licensing and Intellectual Property LLC, is the owner of trademark registrations across various jurisdictions including the United States of America (since May 29, 1906, registration no. 53237) and the European Union (since October 25, 2011, registration no. 009847773) for the wordmark VALVOLINE. Further, Complainant is the owner of the currently live trademark application at the United States Patents and Trademarks Office (USPTO) VALVOLINE CARCAM (App. No. 87699121), filed on November 28, 2017, that is, 4 days before the registration of the disputed domain name. None of these applications or registrations have been abandoned, cancelled, or revoked.
2. Complainant also has an internet presence through its primary website at (since March 4, 1995) as well as its various social media platforms including Facebook, Twitter, and Instagram.
3. Respondent registered on December 2, 2017, more than 23 years after the registration of and 112 years after the first registration of the VALVOLINE trademark.
4. The disputed domain name does not currently resolve to an active website.
5. Complainant sent two different cease and desist letters to Respondent dated May 3 and 14, 2018, respectively. On May 23, 2018, Respondent offered to transfer the disputed domain name in exchange of USD 1,200. After the Complainant refused to accept the offer, Respondent later offered USD 1,000 on June 1, 2018. 5. Parties' Contentions A. Complainant
1. Complainant was founded in 1866 by Dr. John Ellis, the inventor of the first lubricating oil and the originator of the VALVOLINE trademark. For over 150 years, VALVOLINE has been one of the most recognized and respected premium consumer brands in the global automotive lubricant industry. Today, Complainant is known as a leading worldwide producer and distributor of premium branded automotive, commercial and industrial lubricants, and automotive chemicals.
2. In the United States, Complainant has significantly positioned itself in all of the key lubricant sale channels. The brand operates and franchises more than 1,070 Valvoline Instant Oil Change centers in the United States. It also has a growing international presence with its products being sold in approximately 140 countries through its extensive sales force and technical support organization.
3. Complainant also has a strong Internet presence through its primary website at as well as its various social media platforms including Facebook, Twitter, and Instagram. According to "", Complainant's website located at its primary domain name received over 590,000 total visits during a six-month period ranging from December 2017 to May 2018. Further, according to "" has a global ranking of 132,346 and ranks 31,909 in the United States.
4. Complainant owns and has obtained numerous trademark registrations for its VALVOLINE trademark. Complainant also currently holds a live VALVOLINE CARCAM trademark application the USPTO. None of these applications or registrations have been abandoned, cancelled, or revoked.
5. Complainant has made significant investments over the years to advertise, promote, and protect Complainant's trademark through various forms of media, including the Internet. Based on its extensive use and trademark registrations, Complainant owns the exclusive right to use the VALVOLINE marks.
6. The VALVOLINE trademarks, the VALVOLINE CARCAM trademark application and the domain name all exist before the disputed domain name.
7. The disputed domain name consists solely of Complainant's VALVOLINE CARCAM trademark application, resulting in a domain name that is identical to the Complainant's VALVOLINE CARCAM trademark application. Regardless of Complainant's pending trademark application for its VALVOLINE CARCAM mark with the USPTO, the Disputed Domain Name is still confusingly similar to Complainant's VALVOLINE trademark. It is confusingly similar to VALVOLINE.
8. In 2017, Complainant launched Valvoline CarCam that allows customers to see what is happening while their vehicle is serviced and they remain in their car. A monitor shows live views of technicians working both under the hood and below the vehicle, a timer indicating how long service has lasted, promotions and more. The system is being rolled out to all of Complainant's service centers.
9. Complainant is very well known by its VALVOLINE trademark. Respondent is not commonly known by the disputed domain name and does not use it, lacking a legitimate interest. Furthermore, Complainant has not licen