ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION VGP IPCo LLC and Valvoline Licensing and Intellectual Property LLC v. Quan Zhongjun Case No. D2023-3376 1. The Parties The Complainants are VGP IPCo LLC, United States of America, and Valvoline Licensing and Intellectual Property LLC, United States of America, represented by CSC Digital Brand Services Group AB, Sweden. The Respondent is Quan Zhongjun, China. 2. The Domain Name and Registrar The disputed domain name is registered with Cosmotown, Inc. (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 7, 2023. On August 8, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 9, 2023, 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 (Not Shown) and contact information in the Complaint. The Center sent an email communication to the Complainants on August 16, 2023, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on August 18, 2023. 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 August 22, 2023. In accordance with the Rules, paragraph 5, the due date for Response was September 11, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 12, 2023. page 2 The Center appointed Nayiri Boghossian as the sole panelist in this matter on September 14, 2023. 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 Complainants operate in the field of motor oil and have been selling it under the trademark VALVOLINE for over 150 years. The Complainant Valvoline Licensing and Intellectual Property LLC is the intellectual property holding company for the other Complainant, Valvoline Inc., and its affiliated entities. The Complainants own the following trademark registrations for VALVOLINE: - United States registration No. 0053237 registered on May 29, 1906; - United States registration No. 0670453 registered on December 2, 1958. The Respondent registered the disputed domain name on May 21, 2022. The disputed domain name resolves to a website hosting Pay-Per-Click ("PPC") links. 5. Parties' Contentions A. Complainant The Complainants contend that the disputed domain name is identical or confusingly similar to a trademark in which the Complainants have rights. The disputed domain name is a misspelling of the Complainants' trademark as it reverses the positioning of the letters "l" and "v". This is a typical case of typosquatting, which is intended to confuse Internet users. Also, the disputed domain name is phonetically and visually similar to the Complainants' trademark. The generic Top-Level Domain ("gTLD") ".com" should be ignored. The Complainants contend that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not authorized by the Complainants to use their trademark nor is it licensed by the Complainants. The Respondent is not sponsored by or affiliated with the Complainants. The Respondent is not commonly known by the disputed domain name as the WhoIs record does not suggest that the Respondent is commonly known by the disputed domain name and the Respondent has been using a privacy service. The Respondent is not using the disputed domain name in connection with a bona fide offering of goods nor is making a legitimate noncommercial or fair use as the disputed domain name resolves to a website with PPC links relating to the Complainants' industry. The disputed domain name was registered significantly after the registration of the Complainants' trademark. The Complainants contend that the disputed domain name was registered and is being used in bad faith. The Complainants' trademark is known internationally and registered across numerous countries and has been in use since 1866. The Respondent knew or must have known of the Complainants' trademark. Typosquatting is evidence of bad faith. The Respondent is attempting to take advantage of the traffic generated through typing errors. The use of PPC links is further evidence of bad faith. The Respondent did not respond to the cease and desist letters. B. Respondent The Respondent did not reply to the Complainants' contentions. page 3 6. Discussion and Findings A. Identical or Confusingly Similar The Complainants own trademark registrations for the trademark VALVOLINE. The Panel is satisfied that the Complainants have established their ownership of the trademark. The disputed domain name incorporates the Complainants' trademark VALVOLINE reversing the letters "l" and "v". This is a typical case of typosquatting, which is designed to confuse users (Redbox Automated Retail, LLC d/b/a Redbox v. Milen Radumilo, WIPO Case No. D2019-1600). The gTLD ".com" can be ignored when assessing confusing similarity as it is a standard registration requirement. Consequently, the Panel finds that the disputed domain name is confusingly similar to the trademark of the Complainants and that the Complainants have satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, a complainant must make at least a prima facie showing that a respondent does not have any rights or legitimate interests in the disputed domain name. Once such showing is made, the burden of production shifts to the respondent. In the instant case, the Complainants assert, amongst other things, that the Respondent is not authorized by the Complainants to use their trademark. Therefore, the Complainants have established a prima facie case and the burden of production shifts to the Respondent to show that it has rights or legitimate interests. Panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links capitalize on the reputation and goodwill of the complainant's mark. The PPC links show the word "oil", which relates to the Complainants' field of activity. Accordingly, the Panel is of the view that the Respondent is trying to capitalize on the reputation and goodwill of the Complainants' mark. In Legacy Health System v. Nijat Hassanov, WIPO Case No. D2008-1708, it was found that the respondent had no rights or legitimate interests as "the sole purpose of the disputed domain name is to resolve to pay-per-click advertising websites and collect click-through revenue from advertising links. Such use demonstrates that the Respondent has used the disputed domain name to derive a commercial benefit. There is no indication on the website that the Respondent has made a bona fide use of the disputed domain name". Consequently, the Panel finds that the Complainants have met the requirement under the Policy of showing that the Respondent does not have any rights or legitimate interests in the disputed domain name. Accordingly, the Complainants have satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Respondent must have known about the Complainants' business and trademark for the following reasons: 1. The Complainants have been in operation for more than a century and are amongst the leaders in their field. 2. The disputed domain name resolves to a website with PPC links relating to the Complainants' industry. 3. The disputed domain name was registered more than a century after the registration of the Complainants' trademark. Given that the disputed domain name resolves to a page with PPC links, there is bad faith use in the current circumstances. In Mpire Corporation v. Michael Frey, WIPO Case No. D2009-0258, the Panel found that "While the intention to earn click-through-revenue is not in itself illegitimate, the use of a domain name that is deceptively similar to a trademark to obtain click-through-revenue is found to be bad faith use". page 4 Also, typosquatting may be an indication of bad faith (ESPN, Inc v. XC2, WIPO Case No. D2005-0444). In the present case, the Respondent was aware of the Complainants' trademark and has reversed only two letters in order to confuse Internet users and to benefit from typos. Such conduct of using a domain name, to attract Internet users for commercial gain, would fall squarely within the meaning of paragraph 4(b)(iv) of the Policy. Given the above, the Panel believes that the Respondent has registered the disputed domain name in order to trade off the reputation of the Complainants' trademark. Accordingly, the Panel finds that the Complainants have satisfied paragraph 4(a)(iii) 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 disputed domain name, , be transferred to the Complainant. /Nayiri Boghossian/ Nayiri Boghossian Sole Panelist Date: September 21, 2023
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