Complainants are Valero Energy Corporation and Valero Marketing and Supply Company of San Antonio, Texas, United States of America (“United States”), represented by Fasthoff Law Firm PLLC, Houston, Texas, United States (collectively, “Complainant”).
Respondent is Tom Lincoln of Lawrenceville, Georgia, United States. 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 August 28, 2015. On August 31, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 1, 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. In response to a request for clarification by the Center, Complainant filed an amended Complaint on September 4, 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 8, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 28, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 29, 2015.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on October 9, 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 states that Valero Marketing and Supply Company is a wholly owned subsidiary of Valero Energy Corporation. Consistent with the Complaint, references herein to “Complainant” shall refer individually and collectively to both entities, although some of the actions stated herein may or may not relate both entities.
Complainant states that it “has owned and continually used the VALERO ENERGY CORPORATION® and VALERO® marks in commerce for more than 30 years” and that “[a]t the time Respondent registered the domain on July 8, 2015 Complainant was listed as the 13th largest company in the United States according to Fortune magazine.” Complainant further states that it “has spent tens of millions of dollars advertising, marketing, and promoting the VALERO ENERGY CORPORATION® and VALERO® brand under the [VALERO, VALERO ENERGY CORPORATION, V VALERO and VALERO V] 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.” These trademarks are referred to herein as the “VALERO Trademark.”
Complainant provided copies of numerous trademark registration certificates for the VALERO Trademark worldwide, including the following in the United States:
- U.S. Reg. No. 1,314,004 for VALERO for use in connection with “Oil and Gas [EXPLORATION, PRODUCTION,] PROCESSING AND DISTRIBUTION SERVICES” (registered January 8, 1985).
- U.S. Reg. No. 2,560,091 for VALERO for use in connection with “retail store services featuring convenience store items, food products, toiletries, fuels, and lubricants” (registered April 9, 2002).
- U.S. Reg. No. 2,656,971 for VALERO for use in connection with “convenience store services” and “Automobile Service Station services and car wash services” (registered December 3, 2002).
The Disputed Domain Name was created on July 8, 2015, and, according to the Complaint, is being used by Respondent to “engage in criminal and fraudulent activities”, namely, by creating “fake job offers” using the Disputed Domain Name that “purport to come from Complainant” whereby “Respondent collects the names, addresses, email addresses, telephone numbers – even passport numbers – from unsuspecting victims.” 5. Parties’ Contentions A. Complainant
Complainant contends, in relevant part, as follows:
- The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights because Complainant owns numerous trademark registrations for the VALERO Trademark and because the Disputed Domain Name contains the VALERO Trademark in its entirety and “which visually appears similar to the words ‘valero’ and ‘oil’ and which could easily be produced as result of typographical error when seeking information about [Complainant’s] activities in the oil industry.”
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “Respondent has never been commonly known by the domain name; has not used or made demonstrable preparations to use the domain; and is not making a legitimate noncommercial or fair use of the domain 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”; and because Respondent is using the Disputed Domain Name in connection with “fake job offers,” as described above.
- The Disputed Domain Name was registered and is being used in bad faith because, inter alia, Respondent is using the Disputed Domain Name “to engage in fraudulent and criminal conduct” as described above; and “Respondent provided false name and contact information to the registrar when registering the domain name.” B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the 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. Policy, paragraph 4(a). A. Identical or Confusingly Similar
Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the VALERO Trademark.
As to whether the Disputed Domain Name is identical or confusingly similar to the VALERO Trademark, the relevant comparison to be made is with the second-level portion of the domain name only (i.e., “valeroil”), as it is well-established that the Top-Level Domain (i.e., “.com”) may typically be disregarded for this purpose. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2 (“The applicable top-level suffix in the domain name (e.g., ‘.com’) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark.”).
It is obvious that the Disputed Domain Name contains both the VALERO Trademark in its entirety, plus the word “oil.” (The fact that these two words overlap, sharing the letter “o” in the Disputed Domain Name, is irrelevant, as the Panel agrees with Complainant that the Disputed Domain Name “visually appears similar to the words ‘valero’ and ‘oil’ and… could easily be produced as result of typographical error when seeking information about [Complainant’s] activities in the oil industry.”) The addition of the word “oil” to the Disputed Domain Name “describes the products or services with which the trademark is ordinarily used” and, therefore, “may exacerbate or increase the likelihood of confusion.” Zions Bancorporation v. Ryan G Foo, PPA Media Services / Domain Admin, Whois Privacy Corp.,WIPO Case No. D2014-2278.
Accordingly, the Panel finds that Complainant has proven the first element of the Policy. B. Rights or Legitimate Interests
Complainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “Respondent has never been commonly known by the domain name; has not used or made demonstrable preparations to use the domain; and is not making a legitimate noncommercial or fair use of the domain 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”; and because Respondent is using the Disputed Domain Name in connection with “fake job offers,” as described above.
Under the Policy, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, 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 UDRP.” WIPO Overview 2.0, paragraph 2.1.
The Panel finds that Complainant has established its prima facie case and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has satisfied the second element of the Policy. C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the respondent has registered or the respondent has 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or (ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).
In this case, Complainant appears to argue that bad faith exists pursuant to paragraph 4(b)(iv), given that the Disputed Domain Name is being used by Respondent to “engage in criminal and fraudulent activities,” namely, by creating “fake job offers” using the Disputed Domain Name that “purport to come from Complainant” whereby “Respondent collects the names, addresses, email addresses, telephone numbers – even passport numbers – from unsuspecting victims.” Numerous previous panels under the Policy have found bad faith under similar circumstances. See, e.g., Accor v. Paul Hocevar,WIPO Case No. D2012-0025 (“Though the Domain Name is inactive, the Respondent uses an email address in relation with the Domain Name for recruitment services as an official member of Complainant to attract job hunters to apply for jobs through said email address. The Panel finds that the Respondent’s behavior may cause consumers to mistakenly believe that the Domain Name is owned by the Complainant and the bad faith is established”); and Vifor (International) Ltd. v. Glenn Freeman,WIPO Case No. D2014-2065 (“Complainant has produced evidence that the disputed domain name has been used as a support to an email address used for impersonating Complainant, which was linked to bogus job advertisements on a third party website purportedly posted by Complainant… Given the evidence of use of the disputed domain name for a fraudulent purpose, the Panel readily concludes that it was registered and is being used in bad faith by Respondent”).
Accordingly, the Panel finds that Complainant has proven the third element 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 Disputed Domain Name, , be transferred to the Complainant.
Douglas M. Isenberg
Sole Panelist
Date: October 23, 2015
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