WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

MOTUL v. Admon, Sani Cermaic

Case No. D2019-1145

1. The Parties

The Complainant is MOTUL, France, represented by ORDIPAT, France.

The Respondent is Admon, Sani Cermaic, Nigeria.

2. The Domain Name and Registrar

The disputed domain name <motul.live> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 17, 2019. On May 17, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 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 May 24, 2019 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 May 28, 2019.

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 May 29, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 18, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 19, 2019.

The Center appointed Luiz Edgard Montaury Pimenta as the sole panelist in this matter on July 1, 2019. 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 the international French company MOTUL, active in the sector of oil and lubricants for more than 160 years. The Complainant formulates, produces and sells motor vehicles lubricants in more than 100 countries.

The Complainant is the owner of more than 144 trademark registrations for the MOTUL mark throughout the world, including registrations no. 1712391, registered before the National Institute of Industrial Property (INPI) since 1991 <motul.com>, and registration in several jurisdictions, including European Union, France, Brazil, and Australia.

The Complainant is also the registrant of a large number of domain names, such as <motul.com> and <motul.fr> and others, registered since May 28, 1998.

The Respondent did not file a formal Response, and, therefore, very little information is known about the Respondent.

The disputed domain name was registered on January 8, 2019.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the disputed domain name reproduces in its entirety the trademark MOTUL and, therefore it is identical to this mark. The Complainant also alleges that the disputed domain name only differs from the Complainant’s domain name by the addition of the generic Top-Level Domain (“gTLD") “.live”, which is not sufficient to prevent the likelihood of confusion since it is necessary for the registration of the domain name itself.

Nonetheless, the Complainant alleges that the Respondent has no rights or legitimate interest in respect of the disputed domain name, considering that to the best of the Complainant’s knowledge, the Respondent does not own any trademark registrations for the MOTUL mark. The Complainant also emphasizes that the Respondent is not /has never been authorized by the Complainant to use the registered trademark.

Moreover, the Complainant argues that Respondent registered the disputed domain name with bad faith and unlawful interest, since the Respondent has no trademark rights registered or unregistered in connection with the disputed domain name or any other corresponding name. The Complainant also alleges that the bad-faith registration and use in this case would be of “passive use” of a widely known mark, citing a previous panel decision.

The Complainant also highlights that the MOTUL mark is a very well-known mark and that the Respondent could not ignore that the disputed domain name corresponds to a registered trademark.

Also, the Complainant alleges that the MOTUL mark is a made-up word – being distinctive. For this reason, the Respondent should have known of the Complainant’s prior trademark rights in relation to the MOTUL mark.

B. Respondent

The Respondent failed to file its response to the Complainant’s contentions.

6. Discussion and Findings

The Policy establishes three elements, specified in paragraph 4(a) that must be established by the Complainant to obtain relief. These elements are:

(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name;

(iii) The disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Ownership of a trademark registration is generally sufficient evidence that a Complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.2.1. As disclosed through Annex 6A-6B of the complaint, the Complainant owns several trademark registrations for the MOTUL mark, in every jurisdiction, in several classes, since 1991.

Moreover, the disputed domain name incorporates the Complainant’s MOTUL mark in its entirety, having only added the gTLD “.live”, which is not sufficient to prevent the finding of confusingly similarity of the disputed domain name with the Complainant’s trademark, considering that “live” is viewed as a standard registration requirement and as such is disregarded under the analysis of the first element.

In this sense, the use of the gTLD “.live” is irrelevant in order to establish identity or confusing similarity between the disputed domain name and the Complainant’s trademark (see Topvintage.nl BV v. DOMAIN ADMIN, WIPO Case No. D2017-1019“the various generic Top-Level Domains (“gTLDs”) in each of the disputed domain names are commonly disregarded for the purposes of comparison in cases under the Policy on the grounds that they are required for technical reasons only” see also Volkswagen AG v. Todd Garber, WIPO Case No. D2015-2175).

The Panel, thus, concludes that the Complainant has established the first condition of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Complainant has alleged that the Respondent has no rights or legitimate interests with respect to the disputed domain name.

There is no evidence that the Respondent has, before any notice of the dispute, ever been commonly known by the disputed domain name nor has made or is making a legitimate noncommercial or fair use of the disputed domain name. In this regard, it is important to note that the disputed domain name is currently inactive, not resolving to any website.

The Complainant has never authorized, licensed or permitted, in any way, the Respondent to register or use the disputed domain name.

Considering the evidence on the file and that the Respondent failed to file send a Response to the Complaint, this Panel finds that there are no elements suggesting that the Respondent has or might have had rights or legitimate interests in respect of the disputed domain name.

The Panel notes the nature of the disputed domain name which is identical to the Complainant’s trademark in the Second-Level of the disputed domain name and carries a high risk of implied affiliation.

Therefore, the Panel concludes that the Complainant has succeeded to establish the second condition of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

In order to facilitate assessment of whether the bad-faith element is established, paragraph 4(b) of the Policy provides the following non-exclusive scenarios:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the respondent’s website or location or of a product or service on the respondent’s website or location.

In light of the above and considering the Complainant’s allegations, the Panel understands that there are no indicative elements of any of the circumstances described above.

However, considering that the listed scenarios are non-exclusive and merely illustrative, and that the Complainant was able to prove the “passive holding” of the disputed domain name – which reproduces the entirety of the MOTUL mark, registered by the Complainant since 1991, being widely known considering its business journey – amounts to bad faith, is that the Panel finds that the third element has been established.

That is because, given that MOTUL is not a dictionary word, that the disputed domain name is strictly identical to the MOTUL trademark, and that the MOTUL mark has been in use by the Complainant for more than 160 years, as well as the fact that the first MOTUL trademark registration was granted on 1991, is that the Panel accepts that the Respondent should have been aware of the Complainant’s trademark rights related to the MOTUL mark when it registered the disputed domain name.

The whole reproduction of the MOTUL trademark within the disputed domain name can hardly be the result of a coincidence, and shows in the Panel’s view that the Respondent was most likely aware of the Complainant’s rights and activities.

In addition to that, the Respondent has not made any active use of the disputed domain name, which does not resolve to a website.

Accordingly, in regard to the doctrine of “passive holding”, from the inception of the UDRP, previous panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. “While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.” (section 3.3 of the WIPO Overview 3.0; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

In the present case, it is clear that the MOTUL mark is highly distinctive, considering that it does not have a meaning, not being a dictionary word. Moreover, the Respondent has failed to submit a response to the complaint, also failing to provide any evidence of good-faith use of the disputed domain name. Finally, the Panel finds that it is implausible that any good faith use of the disputed domain name is being made, considering the high renown of the MOTUL mark, owned by the Complainant as well as the lack of information on the Respondent and its supposed activities.

Previous panels decisions have also acknowledged that “passive holding” would not prevent a finding of bad faith of the Respondent (Virgin Enterprises Limited v. Cesar Alvarez, WIPO Case No. D2016-2140; Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Godaddy.com, Inc. WIPO Case No. D2017-0246.)

In this case, the Panel is also convinced that the overall circumstances of this case strongly suggest that the Respondent’s non-use of the disputed domain name is in bad faith. Such circumstances include the strength and renown of the Complainants’ MOTUL mark, the Respondent’s failure to take part in the present proceedings and the disputed domain name being identical to the MOTUL mark.

The Panel accordingly reaches the conclusion that the passive holding of the disputed domain name amounts to use in bad faith given the circumstances of the case.

Therefore, the Panel finds that the Complainant has established the third element 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 <motul.live> be transferred to the Complainant.

Luiz Edgard Montaury Pimenta
Sole Panelist
Date: July 9, 2019