Valvoine.com

The timeline behind valvoine.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Valvoline Licensing and Intellectual Property LLC v. Wesley Karr, DomainPower Case No. D2022-4796 1. The Parties Complainant is Valvoline Licensing and Intellectual Property LLC, United States of America (“United States”), represented by CSC Digital Brand Services Group AB, Sweden. Respondent is Wesley Karr, DomainPower, United States. 2. The Domain Name and Registrar The disputed domain name <valvoine.com> is registered with Dynadot, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 14, 2022. On December 14, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 15, 2022, 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 Complainant on December 16, 2022, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on December 21, 2022. 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 Respondent of the Complaint, and the proceedings commenced on December 27, 2022. In accordance with the Rules, paragraph 5, the due date for Response was January 16, 2023. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 19, 2023. page 2 The Center appointed Lorelei Ritchie as the sole panelist in this matter on January 24, 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 Complainant, together with its corporate affiliates (collectively “Complainant”) is a multinational company, based in the United States. For over a century prior to the registration of the disputed domain name, Complainant has offered oil lubricant and related goods and services under the mark VALVOLINE. Complainant is the owner of several registrations for the VALVOLINE mark, including, among others, Registration No. 0053237 (registered April 14, 1905) in the United States, where Respondent lists an address of record. Complainant further owns the registration for the domain name <valvoline.com> (registered March 4, 1995). Complainant uses the URL associated with this domain name to communicate with online users regarding its oil lubrication and other products offered under the VALVOLINE mark. The disputed domain name was registered on November 14, 2011. The URL associated with the disputed domain name resolves to a Pay-Per-Click (“PPC”) site, which advertises third-party goods and services that compete with those offered by Complainant under its VALVOLINE mark. Respondent has no affiliation with Complainant, nor any license to use its marks. 5. Parties’ Contentions A. Complainant Complainant contends that (i) the disputed domain name is identical or confusingly similar to Complainants’ 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. Specifically, Complainant contends that it owns registrations for the VALVOLINE mark for, among other things, oil lubrication and related services. Complainant further contends that its VALVOLINE mark is well-known internationally, particularly in the United States where Respondent lists an address of record. Complainant contends that the disputed domain name consists solely of Complainant’s VALVOLINE mark, with only a deliberate misspelling, leaving out the second “l”. Complainant contends that Respondent lacks rights or legitimate interest in the disputed domain name, and rather has registered and is using it in bad faith, having simply acquired the disputed domain name for Respondent’s own commercial gain. Complainant further alleges that Respondent has engaged in a pattern of conduct that establishes bad faith under the UDRP. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The 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 VALVOLINE mark, but with a clear and obvious misspelling. page 3 This indicates a practice commonly known as “typosquatting”, where a domain name registrant deliberately registers common misspellings of a well-known mark in order to divert consumer traffic. Other UDRP panels have routinely found typosquatted domain names like these to be “confusingly similar” for purposes of a finding under the UDRP. See Edmonds.com, Inc. v. Yingkun Guo, dba This domain name is 4 sale, WIPO Case No. D2006-0694; Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; see also, Credit Karma, Inc. v. Domain Admin, WhoIs Privacy Corp., WIPO Case No. D2017-0194. The Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights for purposes of paragraph (4)(a)(i) of the Policy. B. Rights or Legitimate Interests The Panel next considers whether Complainant has shown that Respondent has no “rights or legitimate interest”, as must be proven to succeed in a UDRP dispute. 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”. No evidence has been presented to the Panel that might support a claim of Respondent’s rights or legitimate interests in the disputed domain name, and Respondent has no license from, or other affiliation with, Complainant. Moreover, the typosquatting nature of the disputed domain name reflects the Respondent’s lack of rights or legitimate interests, given the implied intent behind typosquatting to mislead unsuspecting Internet users expecting the Complainant and unaware of the typographical variation in the disputed domain name as compared to the trademark. Therefore, the Panel finds that Complainant has provided sufficient evidence of Respondent’s lack of “rights or legitimate interests” in accordance with paragraph 4(a)(ii) of the Policy 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, Respondent has used the disputed domain name to resolve to a PPC site, which advertises third-party goods and services that compete with those offered by Complainant under its VALVOLINE mark. Hence, Respondent is trading on the goodwill of Complainant’s trademarks to attract Internet users, presumably for Respondent’s own commercial gain. The Panel further notes that several UDRP panels have found that Respondent has engaged in bad faith registration and use of other globally known marks. See Williams-Sonoma, Inc. v. Wesley Karr, Power Click, WIPO Case No. D2022-3915; DO HOUSE Inc. v. Super Privacy Service LTD c/o Dynadot / Wesley Karr, WIPO Case No. D2022-2451; Project Management Institute, Inc. v. Super Privacy Service LTD / Wesley Karr, WIPO Case No. D2022-2259; AB Electrolux v. Wesley Karr, Power Click, WIPO Case No. D2021-0870. The Panel also takes note of Respondent’s apparent current ownership of the registration for several other domain names, including <addidas.us>, <britax.us>, <colgate.us>, <hp-support.us>, and <huffingtonpost.us>. This also evidences bad faith in accordance with paragraph 4(b)(ii). page 4 Therefore, the Panel finds sufficient evidence that Respondent registered and used the disputed domain name in bad faith for purposes of 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 <valvoine.com> be transferred to Complainant. /Lorelei Ritchie/ Lorelei Ritchie Sole Panelist Date: February 7, 2023

Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.