The Complainants are Valero Energy Corporation and Valero Marketing and Supply Company of San Antonio, Texas, United States of America (“USA”), represented by Adams and Reese LLP, USA.
The Respondents are PrivacyP of Nobby Beach, Queensland, Australia and Maying Joe of Pyongyang, Pyongyang-ai, Democratic People’s Republic of Korea (jointly referred to as the “Respondent”). 2. The Domain Name and Registrar
The disputed domain name is registered with RegisterM Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 3, 2012. On May 3, 2012, the Center transmitted by email to RegisterM Corp. a request for registrar verification in connection with the disputed domain name. On May 7, 2012, RegisterM Corp. 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 original Complaint. In particular, the Center was advised by RegisterM Corp. that the registrant of the disputed domain name is Maying Joe of Pyongyang, Pyongyang-ai, Democratic People’s Republic of Korea. The Center sent an email communication to the Complainant on May 11, 2012 providing the registrant and contact information disclosed by RegisterM Corp., and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 16, 2012 in which Maying Joe was added as a Respondent jointly and severally with the Respondent PrivacyP.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 18, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 7, 2012. The Respondent did not submit any response or indicate that it intended to do so. Accordingly, the Center notified the Respondent’s default on June 8, 2012.
The Center appointed Daniel R. Bereskin, QC as the sole panelist in this matter on June 14, 2012. 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 Complainants are Valero Energy Corporation, a Delaware corporation whose principal place of business is located in San Antonio, Texas, USA, and Valero Marketing and Supply Company, a wholly owned subsidiary of Valero Energy Corporation (jointly referred to in the Complaint and herein as the “Complainant”).
The Complainant has used trade marks comprising VALERO continuously in the USA since 1979 until the present, has spent millions of US dollars in advertising, marketing and promoting the VALERO brand using print, television, radio, Internet, billboards and signage among other advertising media. The Complainant has been rated by Fortune Magazine as one of the 30 largest companies in the USA since 2005 and has operated the website since at least 1996. The Complainant operates more than 4,000 gas stations under the VALERO, V VALERO and VALERO V trade marks. Annex 6 to the Complaint indicates that the Complainant is the North America’s largest refiner.
The Complainant is the owner of a number of trade marks registered with the United States Patent and Trademark Office comprising VALERO. These include VALERO ENERGY CORPORATION & Des., No. 1,202,362 dated July 20, 1982; VALERO, No. 1,314,004 dated January 8, 1985; VALERO, No. 2,560,091 dated April 9, 2002; VALERO, No. 2,656,971 dated December 3, 2002; VALERO & V Des., No. 2,656,973 dated December 3, 2002; VALERO & V Des., No. 3,688,322 dated September 20, 2009; VALERO & V Des., 2,938,790 dated April 5, 2005; VALERO & V Des., No. 2,927,757 dated February 22, 2005, and VALERO & Des., No. 3,108,715 dated June 27, 2006. These registrations collectively cover a number of goods and services connected with the oil and gas field, including in particular retail store services featuring the sale of gasoline and diesel fuel and convenience store items, and related goods and services. 5. Parties’ Contentions A. Complainant
The Complainant alleges (1) that the disputed domain name is identical or confusing with the Complainant’s trade marks referred to above, and in particular with its VALERO trade mark in that the disputed domain name is identical therewith but for the addition of the generic words “gas station”, and that the addition of such generic words makes the disputed domain name confusingly similar to its trade mark, citing The Bank of Nova Scotia v. Whois Protection,WIPO Case No. D2007-0884, (2) that the Respondent has no rights or legitimate interests in the disputed domain name, (3) that the Respondent has used the disputed domain name to advertise various credit card offers from companies that offer goods and services which are competitive with some of those offered by the Complainant, and (4) having regard to the Complainant’s size and notoriety, the registration by the Respondent of the disputed domain name incorporating the Complainant’s VALERO trade mark, in itself is evidence of bad faith. The Complainant asserts that it has not authorized or licensed the registration by the Respondent of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. Although the Complainant never-the-less is required to prove its case, the Panel may accept the evidence filed on behalf of the Complainant as true if it appears reasonable on its face, and may draw reasonable inferences therefrom: Associated London Distribution Limited t/a ALD Logistics v. Maria Weiss,WIPO Case No. D2012-0469, citing Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403. 6. Discussion and Findings
Notwithstanding the failure of the Respondent to submit a Response to the Complaint or to indicate that it intended to do so, the Complainant is required by the Policy to establish its rights in the trade marks upon which it relies, that the disputed domain name is identical or confusingly similar to the trade marks, that the Respondent has no rights or legitimate interests in the disputed domain name, and that the Respondent has registered and is using the disputed domain name in bad faith. A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant is the owner of the various VALERO trade marks referred to in the Complaint, and that it is therefore entitled to bring this proceeding.
The disputed domain name incorporates the registered trade mark VALERO, which is its most dominant element of the disputed domain name. The Panel has no hesitation in finding that the disputed domain name is confusingly similar to the Complainant’s VALERO registered trade marks. The addition of the words “gas station” to “valero” in the disputed domain name mitigates in favour of confusing similarity, particularly since such generic words directly point to the Complainant’s business. B. Rights or Legitimate Interests
The Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Panel is satisfied that the Respondent is not affiliated with the Complainant, and has not been licensed or authorized by the Complainant to register or to use the disputed domain name.
The Respondent has not rebutted the Complainant’s prima facie case and, as a consequence, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
Having regard to the close similarity between the Complainant’s registered trade marks comprising VALERO, the inherent distinctiveness of the trade mark VALERO, the nature, size and notoriety of the Complainant’s business, the inclusion in the disputed domain name of generic words pointing to the Complainant or its business, and the Respondent’s probable commercialization of the use of the disputed domain name (via a pay-per-click website), the Panel finds that there is no credible explanation for the registration of the disputed domain name other than that it was registered and used in bad faith. 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 be transferred to the Complainant.
Daniel R. Bereskin, QC
Sole Panelist
Dated: June 17, 2012
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