Complainant is Valero Energy Corporation and Valero Marketing and Supply Company of San Antonio, Texas, United States of America, represented by Fasthoff Law Firm PLLC, United States of America.
Respondent is Sharad Bhat of Birsa, Balaghat, India. 2. The Domain Name and Registrar
The disputed 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 July 8, 2015. On July 8, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 9, 2015, 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 July 13, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 2, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 3, 2015.
The Center appointed Ugur G. Yalçiner as the sole panelist in this matter on August 12, 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. 4. Factual Background
Complainant is a company established in the United States of America and used the VALERO ENERGY CORPORATION mark in commerce for at least 35 years and has used the VALERO mark in commerce for at least 32 years.
Complainant has rights over the VALIUM trademark for which it holds several trademark registrations and first usage in 1979.
Complainant has spent tens of millions of dollars advertising, marketing, and promoting the VALERO ENERGY CORPORATION and VALERO 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.
Complaint has continuously owned and operated an Internet website under the domain name for many years, and utilizes that domain name for company email addresses through which it communicates internally, with customers, vendors, and the public in general.
The disputed domain name was created on September 25, 2014. 5. Parties’ Contentions A. Complainant
Complainant’s assertions may be summarized as follows:
Complainant has continuously used the VALERO ENERGY CORPORATION trademark in commerce for at least 35 years and has used the VALERO mark in commerce for at least 32 years. Complainant’s trademark VALERO is registered on behalf of Complainant at the United States Patent and Trademark Office (USPTO) as of July 1982. The disputed domain name incorporates Complainant’s trademark VALERO in its entirety. The disputed domain name is confusingly similar to the trademark of Complainant.
Complaint further has continuously owned and operated an Internet website under the domain name for many years, and utilizes that domain name for company email addresses through which it communicates internally, with customers, vendors and the public in general.
The disputed domain name is confusingly similar to the trademarks owned by Complainant because it is comprised of Complainant’s VALERO mark in its entirety plus the generic Top-Level-Domain (gTLD) “.com”.
The only difference between the Complainant’s trademarks and the disputed domain name is the addition of the generic term “corps” to the word “valero.” Other panels have held that “the addition of a generic term does not limit the risk of confusion between a complainant’s trademark and a disputed domain name.
The disputed domain name was registered in bad faith. Complainant has owned and continually used the VALERO ENERGY CORPORATION and VALERO trademarks in commerce for more than 30 years.
At the time Respondent registered the disputed domain name on September 25, 2014, Complainant was listed as the tenth largest company in the United States according to Fortune magazine. Respondent knew of Complainant’s prominence in the business world when it registered the disputed domain name.
Respondent does not, as of the time of filing of this Complaint, operate an active website at the disputed domain name.
Respondent has no rights or legitimate interests in the disputed domain name . Respondent has never been commonly known by the disputed domain name, has not used or made demonstrable preparations to use the disputed domain name and is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain. Complainant has not licensed to Respondent the right to use the VALERO ENERGY CORPORATION or VALERO marks and Respondent is not otherwise authorized to act on Complainant’s behalf.
Respondent registered and used the disputed domain name in bad faith. Respondent was likely aware of Complainant’s several decade old fame and passive holding does not prevent a finding of bad faith use. Complainant cannot conceive of any use of the disputed domain name that would not be in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The burden for Complainant, under paragraph 4(a) of the Policy, is to show; (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered in bad faith. A. Identical or Confusingly Similar
The Panel finds that Complainant has rights in the VALERO mark registered in the United States of America since 1982.
The disputed domain name entirely incorporates the term “valero” together with the word “corps”, which does not add any distinctiveness to disputed domain name. In the decision of Turkcell Iletisim Hizmetleri A.S. v. Vural Kavak,WIPO Case No. D2010-0010, the panel mentioned that “the addition of the generic word “mobile” does not distinguish the Respondent’s domain name from Complainant’s trademark as it is well-established under the Policy that a domain name composed of a trademark coupled with a generic term is still confusingly similar to the trademark.”
The Panel finds that VALERO is not a commonly used word for customers and that the trademark VALERO is well-known in the energy sector.
Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark. B. Rights or Legitimate Interests
The Panel notes that Complainant did not grant any license, permission or authorization to Respondent to use the VALERO mark in the disputed domain name.
The Panel also notes that Respondent does not appear to be known by the disputed domain name or have neither a trademark application nor a trademark registration for the word “valero”.
Respondent has not come forth with any evidence indicating its rights of legitimate interests.
Therefore, the Panel finds that Respondent lacks rights or legitimate interests in the dispute domain name. C. Registered and Used in Bad Faith
Complainant asserts that Respondent registered and used the disputed domain name in bad faith.
The evidence adduced by Complainant shows that several decades before the registration date of the disputed domain name in 2014, Complainant had obtained registration for the trademark VALERO in 1982.
Complainant states that it is possible, in certain circumstances, for inactivity by Respondent to amount to the disputed domain name being used in bad faith. In fact the lack of active use of the disputed domain name (in other words passive holding) does not as such prevent a finding of bad faith. All the circumstances of the case such as Complainant having a well-known trademark, no Response to the Complaint and the impossibility of conceiving a good faith use of the disputed domain name to determine whether Respondent is acting in bad faith must be examined.
In the decision of Arkema France v. Arkema Global, Arkema Group, Arkema Corp and Arkema Cloud,WIPO Case No. D2014-2010, the panel concluded that respondent must have known and certainly targeted complainant when it registered the disputed domain names and in the circumstances of that case, it meant that the registration was in bad faith. Additionally, in the decision of Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, it is also concluded that paragraph 4(b) recognizes that inaction (e.g., passive holding) in relation to a domain name registration can, in certain circumstances, constitute a domain name being used in bad faith. Furthermore, it must be recalled that the circumstances identified in paragraph 4(b) are “without limitation” — that is, paragraph 4(b) expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith.
Since Complainant’s trademark VALERO is a well-known trademark in the energy sector, Respondent likely was, or should have been, aware of Complainant’s long standing fame and trademark at the time of registration of the disputed domain name, which, in the circumstances of this case, is evidence of bad faith registration.
Respondent did not respond to the Complaint and also it is not possible to conceive any good faith use of the disputed domain name.
The Panel notes that the disputed domain name was not active when he entered the website on August 25, 2015. In accordance with previous UDRP decisions, inactive or passive holding of a domain name, under the circumstances does not prevent a finding of bad faith use.
Given the foregoing, this Panel finds that the disputed domain name 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.
Ugur G. Yalçiner
Sole Panelist
Date: August 31, 2015
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