Valvoline Licensing and Intellectual Property LLC v. Nguyen Van Dai
Claim Number: FA2304002038461
Complainant is Valvoline Licensing and Intellectual Property LLC ("Complainant"), represented by CSC Digital Brand Services Group AB, Delaware, USA. Respondent is Nguyen Van Dai ("Respondent"), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <valvoline.us>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to Forum electronically on April 3, 2023; Forum received payment on April 3, 2023.
On April 4, 2023, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by email to Forum that the <valvoline.us> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce's usTLD Dispute Resolution Policy (the "Policy").
On April 4, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 24, 2023 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@valvoline.us. Also on April 4, 2023, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts.
Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On April 28, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed David E. Sorkin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the usTLD Dispute Resolution Policy ("Rules"). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, Forum's Supplemental Rules, and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant owns the well-known VALVOLINE brand and mark, which has been used in connection with automotive lubricants and related goods and services for more than 150 years. Complainant owns longstanding trademark registrations for VALVOLINE in the United States and other jurisdictions.
Respondent is the registrant of the disputed domain name <valvoline.us>, registered in September 2016. The domain name redirects users to a third-party website that sells products related to motor engines. An advertisement for Complainant's products appears on one page of the website, including a facsimile of Complainant's logo. Complainant states that Respondent is not commonly known by the domain name, is not sponsored by or affiliated with Complainant, and has not been given permission to use Complainant's mark.
Complainant contends on the above grounds that the disputed domain name <valvoline.us> is identical to its VALVOLINE mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is identical to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered or is being used in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy ("UDRP") and the usTLD Policy, the Panel will draw upon UDRP principles as applicable in rendering its decision.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a), and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
The disputed domain name <valvoline.us> corresponds to Complainant's registered VALVOLINE trademark, with the ".us" top-level domain appended thereto. The addition of a top-level domain is normally irrelevant for purposes of paragraph 4(a)(i) of the Policy. See, e.g., Hashflow Foundation v. Mahdi Zanddizari / WEG2G, FA 1993108 (Forum May 18, 2022) (finding <hashflow.us> identical to HASHFLOW). The Panel considers the disputed domain name to be identical to Complainant's registered mark.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization. Its sole apparent use has been to redirect users to a third-party site offering products that compete with those offered by Complainant. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., White Horse Capital, LLC d/b/a Birch Gold Group v. Namecheap Namecheap, FA 1599701 (Forum Feb. 16, 2015) (finding lack of rights or interests in similar circumstances); Wells Fargo & Co. v. Domains By Proxy - VSC Proxy Account / Virtual Services Corp., FA 1592280 (Forum Jan. 2, 2015) (same).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered or is being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] 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] web site or location or of a product or service on [Respondent's] web site or location."
Respondent registered a domain name corresponding to Complainant's well-known registered mark without authorization, and is using it to redirect users to a third-party site that offers competing products. Such conduct is indicative of bad faith registration and use under the Policy. See, e.g., White Horse Capital, LLC d/b/a Birch Gold Group v. Namecheap Namecheap, supra (finding bad faith registration and use in similar circumstances); Wells Fargo & Co. v. Domains By Proxy - VSC Proxy Account / Virtual Services Corp., supra (same). The Panel so finds.
Having considered the three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <valvoline.us> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: April 28, 2023
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