The Complainant is MOTUL of Aubervilliers, France, represented by ORDIPAT, France.
The Respondent is Kalash’yan Aleksandr, Aleksandr Kalash’yan of Moscow, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name is registered with Eranet International Limited (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 25, 2017. On April 25, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 5, 2017, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on May 5, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 25, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 29, 2017.
The Center appointed Piotr Nowaczyk as the sole panelist in this matter on June 12, 2017. 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 French public limited company which was established more than 160 years ago. It conducts its business in the oil and lubricants sector. In particular, the Complainant formulates, produces and sells motor vehicle lubricants in more than 100 countries.
The Complainant owns numerous registered trademarks, including:
- International trademark registration No. 267359, dated March 21,1963 for the MOTUL mark in classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 11, 12, 16, 17, 19, 35, 39, 40 and 42;
- International trademark registration No. 600872, dated May 6, 1993 for the MOTUL mark in classes 1 and 4;
- European Union trademark registration No. 000548321, registered on February 3, 1999 for the MOTUL mark in classes 1 and 4.
Moreover, the Complainant is the owner of many domain names including the MOTUL mark such as: (registered on May 28, 1998), (registered on January 20, 1997, (registered on June 9, 2006), (registered on October 17, 2005), (registered on December 1, 1999).
The disputed domain name was registered on September 27, 2016. It resolves to a web page which uses the Complainant’s stylized MOTUL mark and purports to offer cars accessories offered by the Complainant. 5. Parties’ Contentions A. Complainant
Firstly, the Complainant contends that the disputed domain name is confusingly similar to the MOTUL mark. The Complainant emphasizes it name contains the MOTUL mark in its entirety. According to the Complainant, the addition of the generic word ‘original” is not sufficient in itself to avoid any risk of confusion.
Secondly, the Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant contends that is pointing to a website looking like an official MOTUL website with a reproduction of the MOTUL mark (stylized word “Motul” written in white text on a red background, identical to the MOTUL figurative trademarks). It further explains that the images that scroll in the middle of the website that the disputed domain name resolves to contain the same red line that usually highlights the Complainant’s pictures in its own website “www.”. In the Complainant’s opinion, the Respondent created the resolving page of the disputed domain name in such manner that the Internet user may naturally think that it is an official MOTUL’s website. Furthermore, the Complainant points out that the Respondent has never been authorized, licensed, contracted or otherwise permitted by the Complainant in any way to use the Complainant’s trademarks or to register any domain name incorporating the Complainant’s trademarks, nor have the Complainant acquiesced in any way to such use or registration of the trademarks by the Respondent. Consequently, in the Complainant’s opinion, the Respondent has no rights in respect of the domain name and he is not known under the disputed domain name.
Thirdly, the Complainant contends that the Respondent has registered and used the disputed domain name in bad faith to intentionally attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion. The Complainant asserts that the Respondent registered the disputed domain name with the intention to offer the sale of MOTUL’s products online, and claiming having received the Complainant’s support. According to the Complainant, the addition of the word “original” to the trademark MOTUL to compose the domain name clearly indicates the Respondent’s will to represent itself as an authorized distributor, which it is not. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy places a burden on the Complainant to prove the presence of three separate elements. The three elements can be summarized as follows:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The requested remedy may only be granted if the above criteria are met. A. Identical or Confusingly Similar
The disputed domain name contains the MOTUL mark in its entirety, with an addition of a word “original” separated with a hyphen. In the Panel’s opinion, the addition of the word “original” does not serve to distinguish the disputed domain name from the Complainant’s mark. On the contrary, it may even increase confusion of the Internet users who may think that the disputed domain name is owned by the Complainant or its authorized representative which is not the case.
For the purpose of assessing whether a domain name is identical or confusingly similar to a trademark or service mark, the generic Top-Level Domain (“gTLD”) suffix “.com” may generally be disregarded as a gTLD being simply a necessary component of a domain name (LEGO Juris A/S v. Whois Data Protection Sp. z o.o. / Mirek Nowakowski ROSTALCO Sp. z o.o.,WIPO Case No. D2012-0607).
Therefore, the Panel finds that the disputed domain name is confusingly similar to the MOTUL mark and as a consequence, the Complainant has met the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to do so, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the Policy (see Danzas Holding AG, DHL Operations B.V. v. Ma Shikai,WIPO Case No. D2008-0441; see also the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1 and cases cited therein).
The Panel notes the following circumstances presented in the Complaint in relation to any possible rights or legitimate interests of the Respondent in the disputed domain name: (a) there is no evidence that the Respondent has been commonly known by the disputed domain name; (b) the Respondent has not demonstrated use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services; (c) the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue. In particular, a use of a domain name, including a famous trademark, for the purpose of creating a website that mirrors that trademark cannot be qualified as a bona fide offering of goods or services.
Accordingly, in the absence of any evidence to support a possible basis on which the Respondent may have rights or legitimate interests in respect of the disputed domain name, the Panel accepts the Complainant’s unrebutted prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and concludes that the second element of paragraph 4(a) of the Policy is satisfied. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove the registration as well as use in bad faith of the disputed domain name.
Firstly, the MOTUL mark was registered many years before the disputed domain name. Moreover, the “Motul” name has been present on the market for over 100 years. In the Panel’s opinion, the notoriety of the MOTUL mark in the automotive sector indicate that the Respondent knew or should have known about the Complainant’s rights when registering the disputed domain name. As concluded by other UDRP panels: the registration of a well-known trademark by a party, with no connection to its owner and no authorization and no legitimate purpose to use the trademark, is a strong indication of bad faith (see Socie’te pour I’Oeuvre et la Memoire d’Antoine de Saint Exupery - Succession Saint Exupery - D’Agay v. Perlegos Properties,WIPO Case No. D2005-1085).
Secondly, the Respondent has also used the disputed domain name in bad faith which is evidenced by the fact that the website that it resolves to offers similar goods to those offered by the Complainant. Moreover, the screenshots of the website prove that the Respondent used the Complainant’s name and stylized marks. Therefore, Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website at the disputed domain name by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, or endorsement of or affiliation with the website.
In the light of above, the Panel decides that paragraph 4(a)(iii) of the Policy is satisfied. 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 be transferred to the Complainant.
Piotr Nowaczyk
Sole Panelist
Date: June 24, 2017
Full & Egal Universal Law Academy