WIPO Domain Name Decision D2019-1145 for motul.live
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION MOTUL v. Admon, Sani Cermaic Case No. D2019-1145 1. The Parties
The Complainant is MOTUL, France, represented by ORDIPAT, France.
The Respondent is Admon, Sani Cermaic, Nigeria. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 17, 2019. On May 17, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 18, 2019, 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 the Complainant on May 24, 2019 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 May 28, 2019.
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 May 29, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 18, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 19, 2019.
The Center appointed Luiz Edgard Montaury Pimenta as the sole panelist in this matter on July 1, 2019. 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 the international French company MOTUL, active in the sector of oil and lubricants for more than 160 years. The Complainant formulates, produces and sells motor vehicles lubricants in more than 100 countries.
The Complainant is the owner of more than 144 trademark registrations for the MOTUL mark throughout the world, including registrations no. 1712391, registered before the National Institute of Industrial Property (INPI) since 1991 , and registration in several jurisdictions, including European Union, France, Brazil, and Australia.
The Complainant is also the registrant of a large number of domain names, such as and and others, registered since May 28, 1998.
The Respondent did not file a formal Response, and, therefore, very little information is known about the Respondent.
The disputed domain name was registered on January 8, 2019. 5. Parties’ Contentions A. Complainant
The Complainant alleges that the disputed domain name reproduces in its entirety the trademark MOTUL and, therefore it is identical to this mark. The Complainant also alleges that the disputed domain name only differs from the Complainant’s domain name by the addition of the generic Top-Level Domain (“gTLD") “.live”, which is not sufficient to prevent the likelihood of confusion since it is necessary for the registration of the domain name itself.
Nonetheless, the Complainant alleges that the Respondent has no rights or legitimate interest in respect of the disputed domain name, considering that to the best of the Complainant’s knowledge, the Respondent does not own any trademark registrations for the MOTUL mark. The Complainant also emphasizes that the Respondent is not /has never been authorized by the Complainant to use the registered trademark.
Moreover, the Complainant argues that Respondent registered the disputed domain name with bad faith and unlawful interest, since the Respondent has no trademark rights registered or unregistered in connection with the disputed domain name or any other corresponding name. The Complainant also alleges that the bad-faith registration and use in this case would be of “passive use” of a widely known mark, citing a previous panel decision.
The Complainant also highlights that the MOTUL mark is a very well-known mark and that the Respondent could not ignore that the disputed domain name corresponds to a registered trademark.
Also, the Complainant alleges that the MOTUL mark is a made-up word – being distinctive. For this reason, the Respondent should have known of the Complainant’s prior trademark rights in relation to the MOTUL mark. B. Respondent
The Respondent failed to file its response to the Complainant’s contentions. 6. Discussion and Findings
The Policy establishes three elements, specified in paragraph 4(a) that must be established by the Complainant to obtain relief. These elements are:
(i) The disputed domain name is identical or confusingly similar to the 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;
(iii) The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Ownership of a trademark registration is generally suffi