WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Valero Energy Corporation, Valero Refining and Marketing Company v. Web Advertising Corp
Case No. D2008-0407
1. The Parties
The Complainants are Valero Energy Corporation of San Antonio, Texas, United States of America and Valero Refining and Marketing Company, the latter described as the wholly owned subsidiary of the former, referred to collectively as Complainant unless otherwise indicated, represented by Stumpf Farrimond PC, United States of America.
The Respondent is Web Advertising, Corp, of Nassau, Bahamas.
2. The Domain Name and Registrar
The disputed domain name is registered with BelgiumDomains, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on March 27, 2008 and by hard copy on March 20, 2008. On March 25, 2008, the Center transmitted by email to BelgiumDomains, LLC a request for registrar verification in connection with the domain name at issue. On March 26, 2008 BelgiumDomains, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 28, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was April 17, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 18, 2008.
The Center appointed Joan Clark as the sole panelist in this matter on April 25, 2008. 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
According to the Whois search results produced by Internic the Registrar of the domain name is BelgiumDomains, LLC. According to the latter the Respondent Web Advertising, Corp is the registrant of the domain name which was created on January 24, 2005 to expire on January 24, 2009.
The Complainant Valero Energy Corporation declares it is the owner of the following service marks registered in the United States Trademarks Office:
- VALERO, registered January 8, 1985 for oil and gas exploration, production, processing and distribution services.
- VALERO, registered April 9, 2002 for retail store services featuring convenience store items, food products, toiletries, fuels, and lubricants.
- VALERO, registered December 3, 2002 for automobile service station services and car wash services
- VALERO ENERGY CORPORATION & Design, registered July 20, 1982, for oil and gas exploration, production, and distribution services.
- VALERO ENERGY CORPORATION & Design, registered October 8, 2002, for retail store services featuring convenience store items, food products, toiletries, fuels, and lubricants with a disclaimer for the exclusive use of the words “energy corporation” apart from the mark as a whole.
5. Parties’ Contentions
A. Complainant
(a) Identical or Confusingly Similar
The Complainant asserts it has rights in and to the marks VALERO and VALERO ENERGY CORPORATION, as confirmed in the case Valero Energy Corp v. American Distribution Systems, Inc.,WIPO Case No. D2001-0581.
The Complainant states that it owns numerous federal registrations on the principal register of the United States Patent & Trademark Office for the mark VALERO, and has continuously used that mark in commerce for at least twenty-four years, and further that, as a result of substantial investment in development of the VALERO brand over more than two decades, a substantial amount of favourable consumer recognition and goodwill has become associated with the VALERO mark.
The Complainant asserts that the domain name in dispute is confusingly similar to the registered service marks owned by the Complainant. The Complainant points out that the domain name contains the word mark VALERO owned by the Complainant, followed by the descriptive word “careers” which would inform Internet users where they could find information about careers with the Complainant, and in support refers to the Bank of Nova Scotia v. Whois Protection,WIPO Case No. D2007-0884.
The Complainant maintains that the Respondent’s domain name is confusingly similar to the Complainant’s marks.
(b) Rights or legitimate interests in respect of the domain name
The Complainant asserts that the Respondent has no rights or legitimate interests in or to domain name. The Complainant maintains that the Respondent has never been commonly known by this domain name, has not used or made demonstrable preparations to use the domain name, and is not making a legitimate non commercial or fair use of the domain name without intent for commercial gain.
The Complainant produces a document entitled “V parked page” to show that the website for the domain name does not exist, or if it exists, shows nothing, which indicates that the domain name is not in use. The Complainant maintains that it had not licensed to the Respondent the right to use any of its trademarks, including the VALERO mark, and that the Respondent is not authorized to act on the Complainant’s behalf in any way and has no rights or legitimate interests in or to the disputed domain name.
(c) Registration and use in bad faith
The Complainant states it has been listed in the Fortune 500 every year since 1986. Further, at the time the Respondent registered domain name on January 24, 2005, the Complainant was listed as the 22nd largest company in the United States according to Fortune magazine.
The Complainant asserts it is reasonable to infer that the Respondent was aware of the famousness of the VALERO mark at the time the domain name was registered and that this played a pivotal role in the latter’s decision to register the domain name.
The Complainant asserts that the Respondent has failed to make any demonstrable preparations to use the disputed domain name in the more than three years since it was registered, and further that the domain name does not resolve to an active website.
The Complainant reports that prior panels have held that merely registering a domain name and holding it to prevent a trademark owner from registering it can constitute bad faith and refers, inter alia, to Telstra Corp v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
The Complainant states that the Respondent has defaulted in twenty-eight prior cases brought by third parties against it, or against one of its known aliases, under the Policy, and that in each such case, the subject domain name was ordered transferred to the Complainant. This pattern of registering infringing names constitutes irrefutable evidence of the Respondent’s bad faith, according to the Complainant.
B. Respondent
The Respondent did not make any reply or file any Response to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that, in order to be successful with respect to a disputed domain name, the Complainant has the burden of proving that all three elements are present in the Complaint, namely:
(i) that the domain name is 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 domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances which, for the purpose of paragraph 4(a)(iii) above, shall be evidence of registration and use of a domain name in bad faith but are not limitative.
Paragraph 4(c) of the Policy sets out three illustrative circumstances each of which, if proven, shall demonstrate the Respondent’s rights or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) above.
A. Identical or Confusingly Similar
The Complainant Valero Energy Corporation is the registered owner of the service mark VALERO pursuant to several registrations, the first of which was recorded on January 8, 1985, and the service mark VALERO ENERGY CORPORATION.
The Panel concludes on the basis of the statements in the Complaint and the evidence produced, none of which has been refuted by the Respondent, that the Complainant has rights in the above-mentioned registered service marks for VALERO and VALERO ENERGY CORPORATION.
The word “valero” is the first and most prominent part of the disputed domain name. The Panel agrees with the Complainant’s contention that the word or mark VALERO, followed by the descriptive word “careers” would inform Internet users where they can find information about careers with the Complainant. As held in the Bank of Nova Scotia v. Whois Protection,WIPO Case No. D2007-0884, “UDRP Panels have repeatedly held that the addition of a generic word to a recognized mark creates a confusing similarity between the domain name and the mark of the Complainant”.
The Panel concludes that the domain name in dispute is confusingly similar to the Complainant’s service mark VALERO and the first criterion for a successful challenge to the domain name has been satisfied.
B. Rights or Legitimate Interests
The Complainant has asserted that the Respondent has no rights or legitimate interests in or to the disputed domain name and has made allegations and submitted arguments in support of this position, to which the Respondent has not replied.
Numerous decisions have held that, while the overall burden of proof is on the complainant, this element of proving the respondent has no rights or legitimate interests in a domain name involves matters which are peculiarly within the knowledge of the respondent, that is, of proving a negative, which may be an impossible task for the complainant. But when the complainant has made the allegations with some facts in support, the respondent has a case to answer and the burden of proving the contrary then rests upon the respondent. See INTOCAST AG v. LEE DAEYOON,WIPO Case No. D2000-1467; Julian Barnes v. Old Barn Studios Limited,WIPO Case No. D2001-0121; Frontier Distribution LLC v. Belize Domain WHOIS Service Lt.,WIPO Case No. D2007-1203; Nutraquest, Inc. f/k/a Cytodyne Technologies, Inc. v. Antigua Domains,.WIPO Case No. D2008-0163.
In this case, the Panel finds no indication of any situation which would indicate the Respondent has rights or legitimate interests in the domain name. There is no indication that the Respondent had been commonly known by the domain name, or had made a legitimate non commercial or fair use of it, or had made bona fide preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
On the contrary, the web page submitted by the Complainant in evidence shows that the Respondent’s website is not in use.
The Panel concludes that, on the basis of the evidence before it, the Respondent has no rights or legitimate interests in the disputed domain name, and the second criterion for a successful challenge to the disputed domain name has been satisfied.
C. Registered and Used in Bad Faith
The evidence that the disputed domain name was registered and is being used in bad faith is particularly strong. The Complainant’s service marks had been registered for some time, one of them since 1985. Their notoriety is evident from the prominence enjoyed by the Complainant as reflected in Fortune magazine as having been one of the Fortune 500 companies every year from 1986 until 2005, the year in which the disputed domain name was registered.
It would be unreasonable to assume that the Respondent was unaware of the renown of the VALERO name and marks, especially in light of the pattern created by the Respondent, reflected in twenty-eight prior cases (according to the Complainant’s count) brought by third parties against the Respondent, in all of which the subject domain names were ordered transferred to the respective complainants.
Furthermore, in the absence of a Response, there is no explanation from the Respondent justifying its independent choice of the domain name involving as its prominent part, the word and mark VALERO.
Although the Respondent has not put the disputed domain name to active use, nevertheless inactivity can be equated to passive use of the domain name, by preventing another, such as the Complainant herein, from registering the disputed domain name.
The Panel concludes that the Complainant has satisfied the third criterion for a successful challenge of the domain name , that is, that it was registered and is used in bad faith.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, be transferred to the Complainant.
Joan Clark
Sole Panelist
Dated: May 13, 2008
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