The Complainant is Motul, France, represented by ORDIPAT, France.
The Respondent is xuexiao lei, xue xiao lei (薛晓磊), China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2019. On December 13, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 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 January 2, 2020 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 in English on January 6, 2020. On January 2, 2020, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On January 6, 2020, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding. 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, in English and Chinese, of the Complaint, and the proceedings commenced on January 10, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 30, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 4, 2020. The Center appointed Jonathan Agmon as the sole panelist in this matter on February 19, 2020. 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 oil and lubricant company that was created more than 160 years ago. The Complainant is involved in the automotive market and industrial field. The Complainant has a significant international presence due to its primary business as well as regular sponsorships in motor sport events. The Complainant is the owner of numerous trademarks worldwide for the MOTUL marks, including, the following: - MOTUL (International Registration No. 600872) registered on May 6, 1993; - MOTUL (International Registration No. 267359) registered on March 21, 1963; - MOTUL (Registration No. 1712391) registered in France on December 17, 1991; - MOTUL (European Union Registration No. 548321) registered on February 3, 1999; and - MOTUL (Registration No. G1262307) registered in China on January 22, 2015. The Complainant is also the owner of various domain names, including the following: - - - The disputed domain name The Complainant’s contentions include the following: The Complainant argues that the disputed domain name is confusingly similar to the MOTUL mark on the basis that the disputed domain name wholly incorporates the MOTUL mark and only differs from the MOTUL mark by the addition of the acronym “bj” which could refer to the geographical acronym of the city Beijing, or the country Benin. The Complainant also argues that the Respondent does not have any rights or legitimate interests in the disputed domain name. The Respondent is not affiliated with the Complainant nor did the Complainant license or authorize the Respondent to use the MOTUL mark. The Complainant further argues that the disputed domain name has been registered and is being used in bad faith as the Respondent should have known of the Complainant’s MOTUL mark at the time of registration of the disputed domain name. The Complainant also asserts that the disputed domain name is being used in bad faith as the disputed domain name resolves to a webpage that contains malware and thus the Respondent is using the disputed domain name with the intention to attract Internet users to its website, by creating a likelihood of confusion with the Complainant’s trademark. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Language of Proceeding Paragraph 11 of the Rules provides that: “(a) Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.” The language of the Registration Agreement for the disputed domain name is Chinese. The Complainant requested that the language of the proceeding be English. The Respondent did not comment on the language of the proceeding. The Panel cites the following with approval: “Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (See Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004.) The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of the proceeding: (i) the disputed domain name consists of Latin letters, rather than Chinese characters; (ii) the Complainant may be unduly disadvantaged by having to conduct the proceeding in the Chinese language; and (iii) the Respondent did not object to the Complainant’s request that English be the language of the proceeding. Having regard to the above, the Panel determines that English be the language of the proceeding. 6.2 Substantive Elements of the Policy A. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy requires the complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. The Complainant has provided evidence of its numerous trademark registrations for the MOTUL mark in numerous jurisdictions. A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The disputed domain name It is well-established where a complainant’s trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8; Novartis AG v. Radu Luca,WIPO Case No. D2016-2582). Thus, the addition of the hyphen or the term “bj” does not avoid confusing similarity with the Complainant’s MOTUL mark. It is also established that the addition of a gTLD to a disputed domain name does not avoid confusing similarity as the use of a TLD is technically required to operate a domain name (see Accor v. Noldc Inc.,WIPO Case No. D2005-0016; F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451; WIPO Overview 3.0, section 1.11). Thus, the addition of the gTLD “.com” is without significance and does not prevent a finding of confusing similarity in the present case. In the particular circumstances of the present case, the Panel is of the view that the disputed domain name is identical or confusingly similar to the Complainant’s trademark in which the Complainant has rights. B. Rights or Legitimate Interests Once the complainant establishes a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the respondent to show that it has rights or legitimate interests in respect to the disputed domain name (see WIPO Overview 3.0, section 2.1). In the present case, the Complainant has demonstrated prima facie that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests. The Complainant has provided evidence that it owns numerous trademark registrations in many jurisdictions long before the disputed domain name was registered and that it has not licensed or otherwise permitted the Respondent to use the Complainant’s MOTUL mark (see LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master,WIPO Case No. D2010-0138). In addition, the evidence submitted by the Complainant shows that all the details of the registrant on the WhoIs database are blank. Although the details of the registrant on the WhoIs record are blank, the Registrar has confirmed that the disputed domain name is registered under the Respondent, “xuexiao lei, xue xiao lei (薛晓磊)”, which bears no resemblance to the disputed domain name in any way (see Sportswear Company S.P.A. v. Tang Hong,WIPO Case No. D2014-1875; WIPO Overview 3.0, section 2.3). The Complainant has submitted evidence indicating that the disputed domain name resolves to a page containing malware. When the Panel accessed the disputed domain name, the Panel was redirected to a page which invites the users to download “色虎视频” application. Past UDRP panels have found that the use of a domain name for illegal activity like distributing malware does not confer rights or legitimate interests on a respondent (see WIPO Overview 3.0, section 2.13.1; Wikimedia Foundation, Inc. v. Nanci Nette, Name Management Group,WIPO Case No. D2018-0717). In the present case, the Respondent did not submit a Response to the Complaint and did not provide any explanation or evidence to show rights or legitimate interests in the disputed domain name to rebut the Complainant’s prima facie case. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith The complainant must show that the respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy. The Complainant has submitted evidence that the disputed domain name was created long after the MOTUL mark was registered. The Complainant’s evidence has shown that the MOTUL mark has been registered since 1963 whereas the disputed domain name was only registered in July 2019. Therefore, the prior registration of the MOTUL mark is suggestive of the Respondent’s bad faith when he registered the disputed domain name (see Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735). The Complainant argued that the Respondent knew of the MOTUL mark at the time when he registered the disputed domain name because the MOTUL mark is well known and has been registered multiple times. The Panel further notes that the Complainant has shown that its MOTUL trademark has been recognized in prior UDRP decisions as well known in connection with the Complainant’s activity. Given the fame and the distinctive nature of the MOTUL mark, the Panel finds that it inconceivable that the Respondent could have acquired the disputed domain name without knowledge of the MOTUL mark (see Leite’s Culinaria, Inc. v. Gary Cieara,WIPO Case No. D2014-0041; WIPO Overview 3.0, section 3.2.2). Furthermore, the Complainant has provided evidence that the disputed domain name resolved to a webpage that disseminates malware. As past UDRP panels have held, the usage of a domain name for per se illegitimate activity is considered evidence of bad faith (see WIPO Overview 3.0, section 3.1.4; Royal Caribbean Cruises Ltd. v. Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2019-2049). Based on the evidence presented to the Panel, including the registration of the disputed domain name long after the registration of the Complainant’s mark, the confusing similarity between the disputed domain name and the Complainant’s mark, the fact that no Response was submitted by the Respondent, and the fact that the disputed domain name was used to disseminate malware, the Panel draws the inference that the disputed domain name was registered and is being used in bad faith. 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 Jonathan Agmon
Sole Panelist
Date: March 4, 2020
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