The Complainants are Valero Energy Corporation and Valero Marketing and Supply Company of San Antonio, Texas, United States of America, both represented by Fasthoff Law Firm PLLC, United States of America.
The Respondent is Maxwell Cole of Mumbai, Maharashtra, India. 2. The Domain Name and Registrar
The disputed domain name (the “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 July 14, 2015. On July 15, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 16, 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.
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 the Respondent of the Complaint, and the proceeding commenced on July 23, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 12, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 13, 2015.
The Center appointed Geert Glas as the sole panelist in this matter on August 21, 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
Based on the Complainants’ assertions, supported by the documents enclosed as annexes to the Complaint, and undisputed by Respondent because of its default, the Panel finds the following:
The Complainants are Valero Energy Corporation, a company organized and existing under the laws of the state of Delaware and Valero Marketing and Supply Company, a wholly-owned subsidiary of Valero Energy Corporation. The Complainants are the owners of numerous United States federal trademark registrations for the words VALERO, VALERO ENERGY COORPORATION, V VALERO and VALERO V, as well as other trademark registrations comprising the term VALERO for numerous goods and services such as oil and gas exploitation, automobile services, credit card services and retail store services.
The Complainants have used the VALERO ENERGY CORPORATION and VALERO trademarks for respectively 35 and 32 years. During this time, the Complainants have spent considerable amounts advertising, marketing, and promoting the VALERO ENERGY CORPORATION and VALERO trademarks in a wide variety of media formats (including print, television, radio, Internet, billboards, and signage, among others).
As a result of Complainants’ significant monetary investment in and continuous use of the VALERO ENERGY CORPORATION and VALERO trademarks over more than three decades, the VALERO ENERGY CORPORATION and VALERO trademarks have developed extensive goodwill and favorable consumer recognition. Nowadays, the Valero Energy Corporation and its subsidiaries constitute the 10th largest company in the United States.
The Complainants have owned and operate an Internet website under the domain name for many years, and use this domain name for company email addresses to communicate internally, but also with customers, vendors and the public in general.
As evidenced by the Complainants, previous panels in UDRP cases have previously held that the Complainants have rights in the above mentioned trademarks. Those previous UDRP panels considered said trademarks to be both distinctive and famous within the meaning of U.S. trademark law.
On January 7, 2015, the Domain Name was registered to the Respondent. The website to which the Domain Name resolves is a blank page displaying the following wording “unable to locate the server named ‘www.’ – the server does not have a DNS entry”. The website linked to the Domain Name is thus inactive. 5. Parties’ Contentions A. Complainants
The Complainants request that the Domain Name be transferred to them on the following grounds:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights.
The Domain Name is confusingly similar to the VALERO and VALERO ENERGY trademarks owned by the Complainants, because it is comprised of Complainants’ VALERO and VALERO ENERGY trademarks in their entirely and the generic Top-Level Domain (“gTLD”) “.com”. The Complainants contend that this gTLD “.com” is irrelevant to the Panel’s inquiry.
Furthermore, the only difference between the Complainants’ VALERO ENERGY trademark and the Domain Name is the addition of the term “corps”. The Complainants contend that the addition of a generic term does not limit the risk of confusion between a complainant’s trademark and a disputed domain name. For this reason, the Complainants state that the Domain Name is confusingly similar to the Complainants’ VALERO ENERGY trademark.
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name.
The Complainants contend that Respondent (i) has never been commonly known by the Domain Name; (ii) has not used or made demonstrable preparations to use the Domain Name; and (iii) is not making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain. Furthermore, the Complainants have not licensed to Respondent the right to use the VALERO ENERGY CORPORATION or VALERO trademarks, and Respondent is not otherwise authorized to act on Complainants’ behalf.
Because the Domain Name is inactive as it leads to a blank page, the Complainants contend that the Respondent’s conduct does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use.
Finally, the Complainants note that another UDRP panel recently ordered the transfer of the domain name to the Complainant Valero Energy Corporation (Valero Energy Corporation and Valero Marketing and Supply Company v. Mourad Menif,WIPO Case No. D2015-0005).
(iii) The Domain Name was registered and used in bad faith.
The Complainants contend that the Respondent knew of Complainants’ prominence in the business world when it registered the Domain Name. Notwithstanding this knowledge, Respondent intentionally registered, for commercial gain, the Domain Name that is comprised of the Complainants’ VALERO ENERGY CORPORATION and VALERO trademarks.
The Respondent has registered the Domain Name thereby preventing the Complainants from registering a domain name that embodies the VALERO and VALERO ENERGY CORPORATION trademarks owned by the Complainants. Additionally, the Complainants are of the opinion that, Respondent provided a false name and contact information to the Registrar when registering the Domain Name. Respondent failed and refused to respond to the Complainants’ demand to transfer the Domain Name to the Complainants. Because of these reasons, the Complainants contend that the conduct set forth herein is evidence of bad faith. B. Respondent
The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainants prove each and all of the following three elements in order to be successful in these proceedings:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights;
(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. A. Identical or Confusingly Similar
The Complainants have demonstrated that they are the owners of numerous registered trademarks for the name VALERO ENERGY CORPORATION and VALERO in the United States.
Firstly, the Domain Name incorporates the VALERO trademark of the Complainants in its entirety and differs from the VALERO trademark of the Complainants only in that the suffixes “energy” and “corps” have been added. Several UDRP panels have held that wholly incorporating a complainant’s registered trademark in a domain name may be sufficient to establish confusing similarity for the purposes of the Policy, particularly where the trademark is highly recognizable and famous (see, e.g., AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; and The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113). In addition, it is well-established that adding a generic or descriptive term to a registered trademark does not prevent the domain name from being confusingly similar to that registered trade mark (see, e.g., Microsoft Corporation v. J. Holiday Co.,WIPO Case No. D2000-1493; Quixtar Investments, Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253; and Lilly ICOS LLC v. John Hopking/Neo net Ltd.,WIPO Case No. D2005-0694). In light of the above, the Panel finds that the Domain Name is confusingly similar to the Complainants’ VALERO trademark.
Secondly, the Domain Name incorporates the VALERO ENERGY CORPORATION trademark of the Complainants and differs from the trademark of the Complainants only in that the generic term “corporation” has been abbreviated into “corps”. Previous UDRP panels have held that minor alterations cannot prevent a finding of confusing similarity between the trademark and the domain name (see, e.g., Red Bull GmbH v. Yavuz Yuksel, Grey Design, WIPO Case No. D2001-1035;and Dow Jones & Company, Inc. and Down Jones, L.P. v. Powerclick, Inc., WIPO Case No. D2000-1259). In addition, as the “corps” element in the Domain Name will be perceived as an abbreviation of “corporations”, consumers may indeed be confused between the VALERO ENERGY CORPORATION trademark of the Complainant Valero Energy Corporation and the Domain Name. In light of the above, the Panel finds that the use of the common abbreviation “corps” to substitute for the “corporation” element in the VALERO ENERGY CORPORATION trademark does not in the circumstances of this case sufficiently distinguish the resulting Domain Name from the Complainants’ VALERO ENERGY CORPORATION trademark.
Finally, the addition of the gTLD “.com” is not an element of distinctiveness that can be taken into consideration when evaluating the identity and similarity of the Complainants’ trademarks and the Domain Name, because TLDs are a technical required element of every domain name (see, e.g., Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; and Qantas Airways Limited v. Minh Huynh, WIPO Case No. D2008-1382).
The Panel finds that the Domain Name is confusingly similar to the Complainants’ above mentioned registered trademarks.
Accordingly, the Panel finds that the Complainants have established the first element under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, the consensus view is that, once the complainant has made a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the Policy (see, e.g., Document Technologies, Inc. v. International Electronic Communications, Inc.,WIPO Case No. D2000-0270; Dow Jones & Company, Inc., (First Complainant) and Dow Jones LP (Second Complainant) v. The Hephzibah Intro-Net Project Limited (Respondent),WIPO Case No. D2000-0704 and the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1).
The Panel finds that the Complainants have established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name.
Indeed, based on the evidence submitted by the Complainants, the Panel finds that there is no evidence that the Respondent has been commonly known by the Domain Name, has made a legitimate noncommercial use of the Domain Name or has used the Domain Name in connection with a bona fide offering of goods or services.
Moreover, the Respondent has failed to respond to the Complaint and has therefore failed to provide any evidence of its rights or legitimate interests in the Domain Name (see, e.g., The Great Eastern Life Assurance Company Limited v. Unasi Inc, WIPO Case No. D2005-1218; Stanworth Development Limited v. Mike Morgan (290436), WIPO Case No. D2006-0230).
Finally, as demonstrated by the Complainants, the website to which the Domain Name resolves is a blank page displaying the following wording “unable to locate the server named ‘www.’ – the server does not have a DNS entry”. The website linked to the Domain Name is thus inactive.
Based on the evidence provided by the Complainants, the Panel finds that the second element under paragraph 4(a)(ii) of the Policy has been established. C. Registered and Used in Bad Faith
The Panel turns to the question of whether the Domain Name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy describes some circumstances which, if found to exist, will be evidence of the registration and use of the domain name in bad faith. They are presented in the alternative and consist of a non exhaustive list of indicia of bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark 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 have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the 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 location.”
(i) Registered in bad faith
Given that the VALERO and the VALERO ENERGY CORPORATION trademarks are well-known and widely used, the Panel is of the view that it is highly unlikely that the Respondent did not know of the Complainants’ trademarks at the time the Domain Name was registered. Indeed, according to the Complainants, at the time Respondent registered the Domain Name on January 7, 2015 Complainants were listed as the 10th largest company in the United States according to Fortune Magazine.
Several UDRP panels have ruled that bad faith is established where a complainant’s trademark has been shown to be well-known or in wide use at the time of registering a domain name (see, e.g., The Gap, Inc. v. Deng Youqian, supra; Caesar World, Inc. v. Forum LLC,WIPO Case No. D2005-0517; and PepsiCo, Inc. v. Domain Admin, WIPO Case No. D2006-0435).
Consequently, the Panel finds that the incorporation of the VALERO and the VALERO ENERGY trademarks in their entirety as part of the Domain Name is an indication that the Respondent registered the Domain Name in order to unfairly benefit from the Complainants’ trademarks.
(ii) Used in bad faith
As the Domain Name is linked to a website which on the date of the Complaint leads to a blank non-operative page, such behavior can be considered as passive holding. The Panel finds that the Respondent’s apparent lack of so-called active use of the Domain Name does not as such prevent a finding of bad faith. The Panel must examine all the circumstances of the case to determine whether the Respondent is acting in bad faith. Other UDPR panels have considered that, taken cumulatively, where a complainant owns a well-known trademark and there is no response to the complaint, those circumstances can be held to be indicative of use in bad faith.
The Panel concurs with the understanding of several other UDRP panels that passive holding of a domain name can amount to a respondent acting in bad faith. The concept of passive holding may apply even in the event of mere “parking” by a third party of a domain name (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Jupiters Limited v. Aaron Hall,WIPO Case No. D2000-0574; Ladbroke Group plc. v. Sonoma International LDC,WIPO Case No. D2002-0131; Westdev Limited v. Private Data,WIPO Case No. D2007-1903; Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393 and Intel Corporation v. The Pentium Group,WIPO Case No. D2009-0273).
Moreover, the Respondent’s failure to respond to the Complainants’ contentions and as a result to provide any evidence whatsoever of any good faith use of the Domain Name is an additional indication of bad faith as is the widely known nature of Complainants’ trademarks (News Group Newspapers Limited and News Network Limited v. Momm Amed la,WIPO Case No. D2000-1623; Nike, Inc. v. Azumano Travel,WIPO Case No. D2000-1598; and America Online, Inc. v. Antonio R. Diaz,WIPO Case No. D2000-1460).
In light of the above, the Panel concludes that the Domain Name was registered and is being 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 Domain Name be transferred to the Complainants.
Geert Glas
Sole Panelist
Date: September 3, 2015
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