Complainant is MOTUL of Aubervilliers, France, represented by Ordipat, France.
Respondent is Macric Technologies of Chennai, India. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 11, 2019. On January 11, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 14, 2019, 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 January 17, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 6, 2019. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 7, 2019.
The Center appointed Lorelei Ritchie as the sole panelist in this matter on February 13, 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
Complainant is a French public limited company established over 160 years ago, and is a leader in the sale of oil and lubricants, both in the automotive and in the industrial sectors. Complainant has offices in over 100 countries. Complaint owns trademark registrations for the mark MOTUL, and for MOTUL, and design, in various jurisdictions, including, among others, United States Registration No. 1333932 (registered May 7, 1985); International Registration Nos. 267359 (registered March 21, 1963) and 1262307 (registered August 27, 2015); and French Registration No. 1712391 (registered December 17, 1991).
Complainant owns the registration for domain names that incorporate its MOTUL mark. These include (registered May 28, 1998); (registered June 9, 2006); (registered May 16, 2002); and (registered February 14, 2005). Complainant also uses the URL connected with the domain name to inform prospective consumers about its promotions and sponsorships.
The disputed domain name was registered on January 30, 2018. Respondent has no affiliation with Complainant. Prior to the time the Complaint was filed, Respondent was using the URL associated with the disputed domain name to resolve to a website that included Complainant’s own logo, along with a login screen that asked consumers for their username and password. The website was later made inactive. Complainant has not authorized any activities by Respondent, nor any use of its trademarks thereby. 5. Parties’ Contentions A. Complainant
Complainant contends that (i) disputed domain name is identical or confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) Respondent registered and is using the disputed domain name in bad faith.
In particular, Complainant contends that it has a well-known mark, which is featured in global media and promotions. Complainant further contends that it has registrations for MOTUL as well as for MOTUL, and design, both of which it uses online, to consumers around the globe. Complainant contends that the additional term “cms” would be construed by consumers to refer to “content management system” which consumers would associate as a service offered by Complainant.
Complainant contends that Respondent has used the disputed domain name to set up a website meant to lure in customers looking for Complainant and its products and services. Complainant further contends that Respondent has no rights or legitimate interest in the disputed domain name registration. Rather, Complainant contends that Respondent has acted in bad faith in setting up a website, when Respondent clearly knew of Complainant’s rights. B. Respondent
Respondent did not file a reply to Complainant’s contentions in this proceeding. 6. Discussion and Findings A. Identical or Confusingly Similar
This Panel must first determine whether the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that it is. The disputed domain name directly incorporates Complainant’s registered trademark MOTUL, and merely adds the descriptive term “cms” an established acronym for “content management system”. Consumers will likely associate this descriptive term as a reference to Internet content management by or for Complainant. The Panel thus finds that the added term would be perceived by Internet users as descriptive of a website where they could find information about Complainant’s online operations.
Numerous UDRP panels have agreed that supplementing or modifying a trademark with generic or descriptive words does not make a domain name any less “identical or confusingly similar” for purposes of satisfying this first prong of paragraph 4(a)(i) of the Policy. See, for example, General Electric Company v. Recruiters,WIPO Case No. D2007-0584 (transferring ); Inter IKEA v. Polanski,WIPO Case No. D2000-1614 (transferring ); Microsoft Corporation v. StepWeb,WIPO Case No. D2000-1500 (transferring ); CBS Broadcasting, Inc. v. Y2K Concepts Corp.,WIPO Case No. D2000-1065 (transferring ).
The Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Policy provides some guidance to respondents on how to demonstrate rights or legitimate interests in the domain name at issue in a UDRP dispute. For example, paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that Respondent has been “commonly known by the domain name”; or (iii) “legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
Respondent did not submit a reply to the Complaint, however. Rather, as mentioned in Section 4 of this Panel’s decision, prior to the time the Complaint was filed, Respondent was using the URL associated with the disputed domain name to resolve to a website that included Complainant’s own logo, along with a login screen that asked consumers for their username and password. Accordingly, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interest in the disputed domain name, which Respondent has not rebutted. C. Registered and Used in Bad Faith
There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or of a product or service on [the] web site or location”. As noted in Section 4 of this Panel’s decision, prior to the time the Complaint was filed, Respondent was using the URL associated with the disputed domain name to resolve to a website that included Complainant’s own logo, along with a login screen that asked consumers for their username and password. Hence, Respondent has been trading on the goodwill of Complainant’s trademarks to attract Internet users, presumably for Respondent’s own commercial gain.
Several prior UDRP panels have found Complainant’s MOTUL mark to have “renown”, “notoriety” or “strong reputation and goodwill”. Motul v. Contact Privacy Inc. Customer 0138693539/ Konstantin Speranskii, WIPO Case No. D2016-2632 (transferring ); MOTUL v. Kalash’yan Aleksandr/ Aleksandr Kalash’yan; WIPO Case No. D2017-0830 (transferring ); MOTUL v. WhoIs Privacy Protection Service, Internet Invest, Ltd. dba I / Alexandr Adrianovich Kazilov, WIPO Case No. D2017-1359 (transferring ). Given the misappropriation of Complainant’s own logo on the previously-displayed website as well as in the disputed domain name which incorporates Complainant’s mark, taken together with the global nature of Complainant’s MOTUL mark, the Panel finds strong evidence that Respondent registered and used the disputed domain name with knowledge of Complainant’s prior rights, thereby evidencing bad faith.
Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith in accordance with paragraph 4(a)(iii) of the Policy. 7. Decision
For all 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 Complainant.
Lorelei Ritchie
Sole Panelist
Dated: February 21, 2019
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