Complainants are Valero Energy Corporation and Valero Marketing and Supply Company, both of San Antonio, Texas, United States of America; represented by Fasthoff Law Firm PLLC., United States of America.
Respondent is Kim A Waugh, Kim Consult of Lawrenceville, Georgia, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the "Disputed Domain Name") is registered with PDR Ltd. d/b/a PublicDomainR (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 16, 2014. On October 17, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 18, 2014, the Registrar transmitted by email to the Center its verification response confirming that 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" 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 Respondent of the Complaint, and the proceedings commenced on October 23, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 12, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on November 17, 2014.
The Center appointed Maxim H. Waldbaum as the sole panelist in this matter on November 20, 2014. 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
Complainants, Valero Energy Corporation and Valero Marketing and Supply Company, a wholly-owned subsidiary of Valero Energy Corporation, (collectively, the "Complainant") are located in San Antonio, Texas and owns several trademarks for VALERO and VALERO ENERGY CORPORATION and related marks. Specifically, Complainant owns U.S. Trademark Reg. Nos. 1,314,004, 2,560,091, and 3,108,715 for the VALERO trademark, and U.S. Trademark Reg. Nos. 2,656,973, 2,927,757, 2,938,790, and 3,688,322 for the V VALERO and VALERO V marks, as well as other registrations embodying the VALERO mark (individually and collectively, the "Trademarks").
Complainant has been continuously using the Trademarks in commerce for over thirty years mainly in connection with oil and gas exploration, production and distribution services. During this time, Complainant has spent tens of millions of dollars advertising, marketing, and promoting the brand under the Trademarks in the United States and throughout the world in a wide variety of media formats, including print, television, radio, Internet, billboards, and signage, among others.
Complainant previously sought and won transfer of domain names incorporating the Trademarks under the UDRP Policy in the following matters: Valero Energy Corporation v. Bargin Register,WIPO Case No. D2012-2399; Valero Energy Corporation v. ICS INC.,WIPO Case No. D2012-2398; Valero Energy Corporation v.Privacy P/Maying Joe,WIPO Case No. D2012-0939; Valero Energy Corporation v.
Navigation Catalyst Systems, Inc.,WIPO Case No. D2011-1227; Valero Energy Corporation v. Transure Ent., Ltd./Oworested Domain Privacy;WIPO Case No. D2011-0920; Valero Energy Corporation v. Linkz Internet Services,WIPO Case No. D2008-0479; Valero Energy Corporation v. Web Advertising Corp.,WIPO Case No. D2008-0407; Valero Energy Corporation v. Rare Names, Web Reg,WIPO Case No. D2006-1336; Valero Energy Corp. v. American Distribution Systems, Inc.,WIPO Case No. D2001-0581.
Respondent, Kim A Waugh, Kim Consult ("Respondent"), is not associated with Complainant, is not affiliated with Complainant, and is not authorized or licensed to use the Trademarks. Respondent registered the Disputed Domain Name on July 10, 2014, which is designed to look like the website of Valero Energy Corporation and its content alleges that there are career opportunities offered on behalf of Complainant. 5. Parties' Contentions A. Complainant
1. Respondent's Disputed Domain Name is confusingly similar to Complainant's Trademarks because the Disputed Domain Name incorporates the Trademarks in their entirety and merely includes an extra "l" to "valero".
2. Respondent has no rights to or legitimate interests in the Disputed Domain Name because Respondent is not associated with Complainant and therefore not authorized to use Complainant's Trademarks and purports to use the Trademarks to engage in criminal and fraudulent activities.
3. Respondent has registered and is using the Disputed Domain Name to intentionally attract, for criminal and fraudulent activities, Internet users' confidential information by alleging to be Complainant collecting information for job opportunities. These actions are in bad faith as Respondent falsely claims to be Complainant and use the Disputed Domain Name to obtain confidential information from unknowing job applicants. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, Complainant must prove that:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Disputed Domain Name is confusingly similar to Complainant's mark.
The disputed domain name contains sufficient similarity to Complainant's Trademarks for VALERO and VALERO ENERGY CORPORATION to be confusingly similar to the mark.
UDRP panels have consistently concluded that a domain name's inclusion of a registered mark in its entirety results in confusing similarity for purposes of paragraph 4(a)(i) of the Policy. See Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 ("[T]he fact that a Domain Name wholly incorporates a complainant's registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks"); Playboy Enterprises International, Inc. v. Sookwan Park,WIPO Case No. D2001-0778 ( was found confusingly similar to the PLAYBOY mark); and Adaptive Molecular Technologies, Inc. v. Piscilla Woodward S Charles R Thorton, d/b/a Machines & More,WIPO Case No. D2000-0006 (the distinctive features of the domain name were complainant's mark).
The Disputed Domain Name differs from Complainant's Trademarks only by the change of a single letter in the domain name – the addition of the letter "l" to the trademark "valero". The Disputed Domain Name is a predictable mistyping of Complainant's Trademarks. Respondent's registration of the Disputed Domain Name that constitute a common mistyping of Complainant's mark appears to be deliberate – a practice known as "typosquatting" (the intentional registration and use of a domain name that is a common misspelling or predictable mistyping of a distinctive mark). See, e.g., Wachovia Corporation v. American Consumers First,WIPO Case No. D2004-0150; Red Bull GmbH v. Grey Design,WIPO Case No. D2001-1035; Playboy Enterprises International Inc. v. SAND WebNames – For Sale,WIPO Case No. D2001-0094; Telstra Corp. Ltd. v. Warren Bolton Consulting Pty. Ltd.,WIPO Case No. D2000-1293.
Given the foregoing, the Panel finds that the Disputed Domain Name and Complainant's Trademark, when directly compared, are confusingly similar. B. Rights or Legitimate Interests
The Panel concludes that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
Although a complainant bears the ultimate burden of proof, UDRP panels recognize that strict compliance often requires the impossible task of proving a negative because such information is frequently within the sole possession of a respondent. See Altria Group, Inc. v. Steven Company,WIPO Case No. D2010-1762. Accordingly, Complainant needs only make out a prima facie case that Respondent lacks rights or legitimate interests in the domain names. "Upon such a showing, the burden shifts to Respondent to demonstrate its rights or legitimate interests in the disputed domain names."
In this case the Panel finds that Complainant has made a prima facie showing that Respondent does not have rights or legitimate interests in the Disputed Domain Name within the meaning of paragraph 4(a) of the Policy.
This finding is based on the following, non-disputed, circumstances:
- Complainant has no relationship whatsoever with Respondent and has never authorized Respondent to use the Trademarks in the Disputed Domain Name or any other domain name.
- There is no indication in the file that Respondent is known under the Disputed Domain Name.
- The Disputed Domain Name is primarily representative of Complainant as a corporation as it states plainly throughout the website that the Disputed Domain Name is Complainant's website. Hence, Respondent's use of the Disputed Domain Name appears to purposefully confuse Internet users into believe the website is owned by Complainant in order to obtain confidential personal information for criminal and fraudulent purposes.
Further, the Panel concludes that Respondent has not successfully demonstrated any rights or legitimate interests in the Disputed Domain Name. Paragraph 4(c) of the Policy gives a non-exhaustive list of circumstances that can be brought forward by Respondent in order to demonstrate its rights or legitimate interests. Such circumstances may be:
- use or demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services prior to the dispute;
- an indication that the registrant has been commonly known by the domain name even if it has acquired no trademark rights; or
- legitimate noncommercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark.
Respondent did not reply to Complainant's contentions. Therefore the only plausible reason, in the view of the Panel, for Respondent to register the Disputed Domain Name was to divert Internet users to Respondent's website by implying an affiliation with or sponsorship by Complainant or that Complainant approves of and sanctions Respondents website. See Ticketmaster Corp. v. DiscoverNet, Inc.,WIPO Case No. D2001-0252 (finding no rights or legitimate interests where Respondent generated commercial gain by intentionally and misleadingly diverting users away from complainant's site to a competing website); Chip Merchant, Inc. v. Blue Star Elec.,WIPO Case No. D2000-0474 (finding that Respondent's use of the disputed domain names is confusingly similar to complainant's mark, and respondent's use to sell competing goods was an illegitimate use and not a bona fide offering of goods). This is neither noncommercial nor fair use of the disputed domain name.
For the foregoing reasons, the Panel concludes that the second element of the Policy has been established. C. Registered and Used in Bad Faith
The Panel concludes that the requirements of paragraph 4(a)(iii) of the Policy have been sufficiently made out by Complainant and that Respondent's bad faith registration and use of the Disputed Domain Name have been proven.
The third element of the Policy requires that Complainant establish that the Disputed Domain Name has been registered and used in bad faith.
Paragraph 4(b) provides the following four (nonexclusive) circumstances which are deemed to provide evidence of bad faith in registering and using a disputed domain name:
(i) circumstances indicating that you [Respondent] have registered or you [Respondent] have acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trade mark or service mark, or to a competitor of Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Domain Name; or
(ii) you [Respondent] have registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding Domain Name, provided that you have engaged in a pattern of such conduct; or
(iii) you [Respondent] have registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or your location.
The Panel finds that at the minimum the circumstance set out in paragraph 4(b)(iv) is fulfilled here. In the Panel's view there is sufficient evidence that leads to the finding that Respondent acquired the Disputed Domain Name primarily for the purpose of attracting Internet users to Respondent's website or other online locations, by creating a likelihood of confusion with Complainant's Trademarks as to the source, sponsorship, affiliation, or endorsement of Respondent's websites or services on said websites. Although no immediate commercial gain is obtained through this confusion, Respondent's purpose for the website appears to gain the trust of the Internet user into believing the website belongs to the Complainant, so when Respondent asks for personal and confidential information from job applicants, the applicant complies believing Respondent to be a trustworthy and well-known corporation (i.e. Complainant). Respondent then is able to obtain information such as the person's full name, names of their parents, date of birth, address, phone numbers, passport number, passport date of issue and expiry date, place of birth, email address, etc. Such information can then be used for criminal and fraudulent activities such as stealing a person's identity for credit card fraud, etc. Furthermore, the list of circumstances deemed to be bad faith under Paragraph 4(b) is a nonexclusive list, allowing for unique instances such as here, where, immediate commercial gain is not apparent but highly likely.
In the Panel's view, further proof of bad faith is that Respondent has not responded to Complainant's Complaint. 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 Complainant.
Maxim H. Waldbaum
Sole Panelist
Date: December 3, 2014
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