The Complainant is Valvoline Licensing and Intellectual Property LLC, United States of America, represented by CSC Digital Brand Services AB, Sweden.
The Respondent’s name has been redacted for the reason explained in section 6A below. The Respondent is unrepresented. 2. The Domain Name and Registrar
The disputed domain name, (the “Domain Name”), is registered with Wild West Domains, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 11, 2019. On April 11, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 11, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 15, 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 April 23, 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 April 23, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 13, 2019. Apart from two acknowledgement emails from “Investor Relation Team” on April 23, 2019, no formal response was filed with the Center.
The Center appointed Tony Willoughby as the sole panelist in this matter on May 29, 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.
The amendment to the Complaint referred to above stemmed from the fact that the Respondent was making use of a privacy service. The identity of the Respondent was disclosed to the Center by the Registrar in response to the Center’s request for registrar verification. A further issue relating to the identity of the Respondent is dealt with in sections 4 and 6A below. 4. Factual Background
The group of companies of which the Complainant is a member was a pioneer in the automotive lubricant field. The Complainant’s parent company, Valvoline Inc., was founded over 150 years ago and has been using the VALVOLINE trade mark ever since. The Complainant is the registered proprietor of the group’s VALVOLINE trade mark registrations, which include United States Trademark Registration No. 0053237 VALVOLINE (typed drawing) registered May 29, 1906 (application filed April 14, 1905) in class 4 for lubricating oils.
The Complainant owns the domain name, (registered March 3, 1995), which it uses both for its main website and for its internal email addresses.
The Domain Name was registered on November 14, 2018 in the name of an officer of the Complainant, but someone who had no idea that his name was being used for this purpose. The true identity of the underlying registrant is not known. On a date unknown to the Panel, the website to which the Domain Name was connected was taken down.
In December 2018 the Respondent, purporting to be a senior officer of the Complainant, sent an email from an address using the Domain Name (i.e., NAME REDACTED@) to one of the Complainant’s distributors seeking credit. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is confusingly similar to the Complainant’s VALVOLINE trade mark; that the Respondent has no rights or legitimate interests in respect of the Domain Name; and that the Domain Name has been registered and has been used to commit fraud. B. Respondent
The Respondent has not replied to the Complainant’s contentions. 6. Discussion and Findings A. Preliminary Matter – Redaction of the Respondent’s Name
As can be seen from the factual background set out above (section 4) this case appears to be a case where the individual identified on the Registrar’s Whois database is an innocent party unaware of the fraud being perpetrated in his name. In such cases, it is common practice for the Respondent’s name to be redacted from the published decision. The Panel proposes to follow the course of action adopted by the learned panel in Elkjøp Nordic A/S v. Name Redacted, WIPO Case No. D2013-1285 and set out as follows:
“As in Moncler S.r.l. v. Name Redacted,WIPO Case No. D2010-1677; Boehringer Ingelheim Pharma GmbH & Co. KG v. Name Redacted,WIPO Case No. D2012-0890 and Saudi Arabian Oil Company v. Name Redacted,WIPO Case No. D2013-0105, this is a case in which the Panel finds that the Domain Name was registered by a third-party without the involvement of the person identified in the WhoIs as the registrant of the Domain Name, against whom the Complaint was filed. The Panel has accordingly redacted the name of that person from the caption and body of this Decision. The Panel has attached as an Annexure to this Decision an instruction to the Registrar regarding transfer of the Domain Name that includes the name of that person so as to enable effect to be given to the Panel’s order. To this end, the Panel authorises the Center to transmit the Annexure to the Registrar and the parties, but further directs the Center and Registrar, pursuant to paragraph 4(j) of the Policy and paragraph 16(b) of the Rules, that the Annex to this Decision shall not be published in this exceptional case.”
All references in this decision to the Respondent are to the unknown person who registered the Domain Name. B. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights: and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name: and
(iii) The Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Domain Name comprises “valvollne”, a mis-spelling of the Complainant’s VALVOLINE trade mark, and the “.com” generic Top-Level Domain identifier. Despite the mis-spelling the Complainant’s trade mark is clearly recognizable within the Domain Name. The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights. B. Rights or Legitimate Interests
The circumstances surrounding the selection, registration and use of the Domain Name (see section 4 above) make it clear that the Respondent can have no rights or legitimate interests in respect of the Domain Name. The Domain Name is an intentional mis-spelling of the Complainant’s VALVOLINE trade mark, the Domain Name was registered in the name of a senior officer of the Complainant without his knowledge or consent and whose name was used in an email address featuring the Domain Name for an email falsely purporting to come from that individual. Moreover, the purpose of the email was to obtain credit from the recipient of the email, someone who might have been induced to provide it, given the seniority of the purported sender.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. C. Registered and Used in Bad Faith
By the same reasoning the Panel finds that the Domain Name has been registered and is being used in bad faith within the meaning of paragraphs 4(a)(iii) and 4(b)(iv) 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 Domain Name, , be transferred to the Complainant.
Tony Willoughby
Sole Panelist
Date: June 12, 2019
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