The Complainants are Valero Energy Corporation and Valero Marketing and Supply Company, both of San Antonio, Texas, United States of America (“USA”) represented by Fasthoff Law Firm PLLC, USA.
The Respondent is Mourad Menif of Mumbai, India. 2. The Domain Name and Registrar
The disputed domain name, (the “Domain Name”), is registered with Ascio Technologies Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 6, 2015. On January 6, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 6, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On January 13, 2015, the Center sent an email communication to the Complainant noting that the Registrar was incorrectly named in the Complaint and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 13, 2015.
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 January 13, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 2, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 5, 2015.
The Center appointed Tony Willoughby as the sole panelist in this matter on February 13, 2015. 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.
The Panel notes that the second above-named Complainant is a wholly owned subsidiary of the first above-named Complainant and that for the purposes of this decision nothing turns on the fact that they are separate legal entities. Accordingly, the Panel treats them as one and henceforth uses the term “Complainant” to cover both of them. 4. Factual Background
The Complainant is engaged in inter alia the exploration, production and distribution of oil and gas under and by reference to its “Valero” name and is the registered proprietor of numerous United States service mark registrations for marks featuring the name “Valero”.
The earliest of those registrations is United States Registration No. 1,202,362 VALERO ENERGY CORPORATION registered on July 20, 1982 in class 42 for oil and gas exploration, production and distribution services. First use is claimed from November 1979. There is a disclaimer for the words “Energy Corporation” and in addition to the words “Valero Energy Corporation” the trade mark features a five-limbed logo device. Nonetheless the words “Valero Energy Corporation” are the most prominent element of the mark.
Another of the Complainant’s trade mark registrations is United States Registration No. 1,314,004 VALERO (typed drawing) registered on January 8, 1985 in class 42 for oil and gas exploration, production and distribution services.
The Complainant operates a website connected to its domain name.
The Domain Name was registered on December 10, 2014 and is/was1 connected to a website purporting to be a recruitment website operated by or on behalf of the Complainant. There are a number of aspects of the website which make it clear that the website is a fake website and not least serious typographical errors appearing on the website (e.g. the misspelling throughout of “United States of America”). 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is identical or confusingly similar to its VALERO and VALERO ENERGY CORPORATION trade marks, that the Respondent is using the Domain Name for the fraudulent purpose of impersonating the Complainant and that the Respondent registered the Domain Name for that purpose. Thus the Complainant contends that the Respondent can have no rights or legitimate interests in respect of the Domain Name and registered and is using the Domain Name in bad faith within the meaning of paragraph 4(a)(iii) of the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith. B. Identical or Confusingly Similar
The Domain Name comprises two elements, namely the words “ValeroEnergyCorps” and the generic “.org” top level domain identifier. It being permissible for panels to ignore the generic top level domain identifier when assessing identity and confusing similarity for the purposes of paragraph 4(a)(i) of the Policy, the comparison in relation to the first of the above-cited trade mark registrations of the Complainant (see section 4 above), on its face, is between “ValeroEnergyCorps” and VALERO ENERGY CORPORATION. On that basis the two are substantially identical.
However, the Complainant’s trade mark features a logo device and a disclaimer of the words “Energy Corporation”. Insofar as the logo device is concerned, it is modest and does nothing to obscure the prominence of the words. Accordingly, the Panel ignores it. As to the disclaimer this is potentially of greater significance. In light of the disclaimer the appropriate comparison is between “ValeroEnergyCorps” and VALERO.
The Panel regards “Valero” as being the primary distinctive element of the Complainant’s trade mark, which is reproduced in the Domain Name. The Panel regards the “EnergyCorps” element of the Domain Name to be descriptive and non-distinctive for precisely the same reason no doubt that it was thought appropriate for the Complainant to disclaim “Energy Corporation” in respect of its trade mark.
The Panel finds that the Domain Name is confusingly similar to the Complainant’s above mentioned registered trade mark.
In light of the above finding it is unnecessary for the Panel to compare the Domain Name with the second of the above-cited trade mark registrations of the Complainant, but by parity of reasoning the result is the same. C. Rights or Legitimate Interests
The Panel has found as a fact (see section 4 above) that the Domain Name, which is in substance the name of the Complainant, is (or was) being used to connect to a website falsely claiming to be a recruitment website of the Complainant.
The Respondent has not responded and the Panel cannot conceive of any basis upon which such a use could be said to give rise to rights or legitimate interests in respect of the Domain Name in the hands of the Respondent.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. D. Registered and Used in Bad Faith
It is clear to the Panel that the Respondent selected the Domain Name because it replicates in substance the name of the Complainant and selected it for the purpose for which it is (or was until recently) being used, namely to impersonate the Complainant. Moreover, the Respondent has not felt it appropriate to respond to the Complaint.
It is not entirely clear to the Panel what precisely was the intention of the Respondent in undertaking this fraud, but it seems likely to the Panel that the purpose was to defraud Internet users, stealing from them their identities and/or their money. The fact that the website at the Domain Name may have been disabled does not impact the Panel’s finding.
The Panel finds that the Domain Name was registered and is being used in bad faith within the meaning of paragraphs 4(a)(iii) and 4(b)(iv) 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 Domain Name, , be transferred to the first-named Complainant, Valero Energy Corporation.
Tony Willoughby
Sole Panelist
Date: February 17, 2015
1 The Panel attempted to access the Respondent’s website but was unable to do so.
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