WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Valvoline Licensing and Intellectual Property LLC v. Domain Administrator, See PrivacyGuardian.org / Xiaolei Wang

Case No. D2021-1288

1. The Parties

The Complainant is Valvoline Licensing and Intellectual Property LLC, United States of America (“United States”), represented by CSC Digital Brand Services Group AB, Sweden.

The Respondent is Domain Administrator, See PrivacyGuardian.org, United States / Xiaolei Wang, China.

2. The Domain Name and Registrar

The disputed domain names <valvolinetotalreward.com> and <valvolinetotarewards.com> are registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 27, 2021. On April 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 2, 2021, 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 June 4, 2021 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 June 8, 2021.

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 June 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 28, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 29, 2021.

The Center appointed Steven A. Maier as the sole panelist in this matter on July 12, 2021. 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. Identity of Complainant

While the named Complainant in this matter is Valvoline Licensing and Intellectual Property LLC, the term Complainant appears to be used in numerous instances within the Complaint to refer to the activities of another entity, Valvoline Inc. While it is regrettable that the relationship of these entities is not explained, the Panel is prepared to proceed on the assumption that the named Complainant is a subsidiary or associated company of Valvoline Inc. charged with administering its intellectual property interests and will use the term Complainant in the remainder of this Decision to encompass both entities in question.

5. Factual Background

The Complainant is located in Kentucky, United States. It is a supplier of branded lubricants and automotive services under the name and trademark VALVOLINE.

The Complainant is the proprietor of trademark registrations comprising or including the mark VALVOLINE in numerous territories worldwide. Those registrations include, for example:

- United States trademark number 0053237 for the word mark VALVOLINE, registered on May 29, 1906 in International Class 4
- China trademark number 162814 for the word mark VALVOLINE, registered on September 30, 1982 in International Class 4

The Complainant is also the owner of the domain name <valvolinetotalrewards.com>, registered on March 11, 2021.

The disputed domain names <valvolinetotarewards.com> and <valvolinetotalreward.com> were also both registered on March 11, 2021.

Both the disputed domain names have resolved to websites which contain what appear to be pay-per-click (“PPC”) links to a variety of services unconnected with the Complainant or its products.

6. Parties’ Contentions

A. Complainant

The Complainant states that it was founded in 1866 and has supplied lubricating oil under the name and mark VALVOLINE for over 150 years. It submits that it is recognized today as a leading international producer and distributor of premium branded automotive lubricants and related products with sales in over 140 countries worldwide. It exhibits evidence concerning its history, commercial activities and social media presence.

The Complainant submits that the disputed domain names are confusingly similar to its trademark VALVOLINE. It states that both of the disputed domain names incorporate that trademark together with the words “total” and “rewards”, although both the disputed domain names involve misspellings of those words. The Complainant also notes the similarity of both the disputed domain names to its <valvolinetotalrewards.com> domain name, which it uses in connection with a customer rewards scheme.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain names. It states that it has never licensed or authorized the Respondent to use its VALVOLINE trademark, that the Respondent has not been known by that name and that the Respondent is making neither bona fide commercial use nor legitimate noncommercial or fair use of the disputed domain names. Instead, the Complainant submits that the Respondent has used the disputed domain names misleadingly to divert Internet users to websites containing PPC links from which the Respondent derives financial benefit. The Complainant further contends that there is no legitimate use that the Respondent could conceivably make of the disputed domain names.

The Complainant submits that the disputed domain names were registered and have been used in bad faith. The Complainant points in particular to the Respondent’s registration of both disputed domain names on the same day as the Complainant registered its <valvolinetotalrewards.com> domain name and contends that the disputed domain names must have been registered directly in response to that registration.

The Complainant contends that the deliberate misspelling contained in the disputed domain name <valvolinetotarewards.com> further underlines the Respondent’s intent to mislead Internet users and demonstrates a nefarious intent to capitalize upon the Complainant’s goodwill.

The Complainant submits that the Respondent has intentionally used the disputed domain names to create a likelihood of confusion with its VALVOLINE trademark as being the source of, or otherwise connected with, the services offered on the Respondent’s websites.

The Complainant further contends that the Respondent has engaged in a pattern of registering domain names which correspond to third-party trademarks and cites a total of five previous decisions under the UDRP including, e.g. The Depository Fund & Clearing Corporation v. Domain Administrator, See PrivacyGuardian.org / She Lei, Xiaolei Wang, WIPO Case No. D2020-1899. The Complainant adds that the Respondent holds a number of other domain names corresponding to third-party trademarks, e.g. <disneyrewards.com> and contends that it is engaged in an established pattern of cybersquatting.

The Complainant requests the transfer of the disputed domain names.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

7. Discussion and Findings

In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:

(i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) that the disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has demonstrated that it is the owner of registered trademark rights in the mark VALVOLINE. The disputed domain name <valvolinetotarewards.com> comprises that trademark in full together with the terms “tota” and “rewards”. The disputed domain name <valvolinetotalreward.com> comprises that trademark in full together with the terms “total” and “reward”. The Panel accepts the Complainant’s contention that the term “tota” is a deliberate misspelling of the word “total” and finds that the addition of these dictionary words does not prevent a finding of confusing similarity between the disputed domain names and the Complainant’s VALVOLINE trademark. The Panel therefore finds that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

In the view of the Panel, the Complainant’s submissions set out above give rise to a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names. However, the Respondent has not filed a Response in this proceeding and has not submitted any explanation for its registration and use of the disputed domain names, or evidence of rights or legitimate interests on its part in the disputed domain names, whether in the circumstances contemplated by paragraph 4(c) of the Policy or otherwise. The Panel therefore concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

C. Registered and Used in Bad Faith

The Panel finds the Complainant’s trademark VALVOLINE to be distinctive in nature and can conceive of no basis upon which the Respondent can have registered the disputed domain names otherwise than to refer to that trademark. Furthermore, each of the disputed domain names was registered on the same day as the Complainant’s domain name <valvolinetotalrewards.com> and each is identical to that domain name but for the addition or subtraction of one letter. The Panel finds in these circumstances that each of the disputed domain names is inherently misleading and represents a deliberate impersonation of the Complainant.

The Panel finds further that the Respondent has used the disputed domain names with the intention of confusing Internet users who will inevitably believe them to be connected with the Complainant and diverting those users to websites offering a variety of PPC links which are unconnected with the Complainant. The Panel therefore finds that, by using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its websites (paragraph 4(b)(iv) of the Policy).

The Panel finds further, on the evidence submitted by the Complainant which the Respondent has not disputed, that the Respondent has engaged in a pattern of registering domain names corresponding to marks held by the complainant or third parties, which is an additional factor in indicating bad faith on the Respondent’s part (see e.g. section 3.1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

The Panel concludes in the circumstances that the disputed domain names have been registered and are being used in bad faith.

8. 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 names, <valvolinetotalreward.com> and <valvolinetotarewards.com>, be transferred to the Complainant.

Steven A. Maier
Sole Panelist
Date: July 26, 2021