Complainant is 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, United States of America.
Respondent is David Wayne of New York, New York, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with Register4Less, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 20, 2016. On July 20, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 20, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. Complainant filed an amended Complaint on July 21, 2016.
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 July 22, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 11, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 12, 2016.
The Center appointed Sandra A. Sellers as the sole panelist in this matter on August 26, 2016. 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 owns many trademark registrations for VALERO and VALERO ENERGY CORPORATION, including United States trademark VALERO ENERGY CORPORATION, Registration No. 1,202,362, registered on July 20, 1982, and United States trademark VALERO, Registration No. 1,314,004, registered in January 1985. Complainant has used the VALERO mark continuously for more than 30 years in connection with its oil and gas exploration, production and distribution services, and has spent millions of dollars advertising, marketing and promoting the VALERO marks. As a result, the marks have developed extensive goodwill and name recognition. Complainant was listed as the 13th largest United States company in Fortune magazine at the time when Respondent registered the disputed domain name. Complainant also owns and uses the domain name for company email addresses, and to communicate with customers, vendors, and the general public.
Respondent registered the disputed domain name, on March 11, 2016. Respondent has used the disputed domain name “in the email address ‘account_payable@’ to contact victims by submitting fake purchase orders to certain companies seeking payment for goods or services that the perpetrator claims were provided by Complainant. These fake purchase orders also contain infringing uses of Complainant’s logos and trademarks. Complainant set forth an example of a “Ms. Noahton, Director, Purchasing Department”, who requested that a third party ship 57 Motorola 2-way radios to an address in New Lenox, Illinois. Additionally, the disputed domain name resolves to an inactive website, at which an Internet visitor receives messages “404. That’s an error,” and “the requested URL/was not found on this server.” The domain name is inactive. 5. Parties’ Contentions A. Complainant
Complainant asserts that it has rights in the VALERO trademarks. It contends that the disputed domain name is confusingly similar to Complainant’s marks because it consists of Complainant’s VALERO mark in its entirety, and that the only difference between Complainant’s mark and the disputed domain name is the addition of the generic word “corp”, which is a short form of the word “corporation”, and the geographic indicator “usa”. Complainant further alleges that Respondent has no rights or legitimate interests in the disputed domain name, and that it registered and uses the disputed domain name in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(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 A. Identical or Confusingly Similar
To satisfy Paragraph 4(a)(i) of the Policy, Complainant must show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
As set forth above, Complainant owns various trademark registrations for the VALERO marks. The disputed domain name is confusingly similar to Complainant’s VALERO mark. It contains Complainant’s VALERO mark in its entirety. The only differences between Complainant’s mark and the disputed domain name is the addition of the element “corp”, which is a short form of the word “corporation”, and the geographic indicator “usa”. Numerous previous UDRP decisions have held that the addition of a generic word does not distinguish a disputed domain name from a complainant’s mark or preclude a finding of confusing similarity. See, e.g., Walmart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662. Numerous previous UDRP decisions have also held that the addition of a geographical indicator is likely to be interpreted by Internet users as describing geographical origin of a complainant’s products or services and that the Complainant is operating or doing business in such area. See, Kabushiki Kaisha Toshiba dba Toshiba Corporation v. WUFACAI,WIPO Case No. D2006-0768; LEGO Juris A/S v. Budi Irshandi/Cha Licious,WIPO Case No. D2012-2343; Fashions Limited v Australia Karen Millen, Linde Meredith,WIPO Case No. D2012-2376.
Accordingly, the Panel finds that Complainant has rights in the VALERO mark and that the disputed domain name is confusingly similar to Complainant’s mark. Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Because it is generally difficult for a complainant to prove the fact that a respondent does not have any rights or legitimate interests in a disputed domain name, previous UDRP panels have found it sufficient for a complainant to make a prima facie showing of its assertion where there has been no response.
Complainant has exclusive rights in the VALERO mark and has not authorized Respondent to register and use the disputed domain name . Respondent is not affiliated with or related to Complainant, nor is Respondent licensed or authorized to use the VALERO mark. Respondent is not known under the mark. Respondent has made no showing that it has any rights or legitimate interests in using the disputed domain name for a bona fide offering of goods or services. On the evidence before the Panel, Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name.
The Panel is satisfied that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in the disputed domain name.
Respondent is in default, and has not provided any evidence in its own favor.
Complainant also indicates that Respondent’s use of the disputed domain name and related email addresses to lure others into fulfilling fake purchase orders is criminal and fraudulent activity, and that other UDRP panels have found that this type of activity does not demonstrate legitimate rights or legitimate interests in a disputed domain name. See, e.g., Valero Energy Corp. v. Lincoln,WIPO Case No. D2015-1550.
The Panel finds that the evidence in the record is sufficient to establish that Respondent has no rights or legitimate interests in the disputed domain name, and thus Complainant meets the second criterion of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that for the purposes of paragraph 4(a)(iii), evidence of the registration and use of a domain name constitutes bad faith if:
(iii) [Respondent] [has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [Respondent] [has] intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] website 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 [Respondent’s] web site or location or of a product or service on [Respondent’s] web site or location.”
Moreover, these factors are not all-inclusive.
It is difficult to conceive that Respondent did not know of Complainant’s marks and products when Respondent registered the disputed domain name. As set forth above, Complainant’s goods and services are protected by various trademark registrations for VALERO, and Complainant has used the VALERO mark for over 30 years. Complainant was named the 13th largest company in the United States by Forbes magazine at the time of Respondent’s registration of the disputed domain name. All of this occurred before Respondent registered in March 2016. Further, the disputed domain name resolves to an inactive web page. Based on these facts, this Panel infers that Respondent was aware or must have been aware of Complainant’s mark when Respondent registered the disputed domain name, and therefore registered it in bad faith. See, e.g., Jupiters Limited v. Aaron Hall,WIPO Case No. D2000-0574, in which the panel found it “inevitable that [r]espondent registered the domain names in full knowledge of [c]omplainant’s rights and interests”.
It is also clear that Respondent uses the disputed domain name in bad faith, with a variation of using the disputed domain name for commercial gain by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the disputed domain name. As set forth above, Respondent flagrantly led its targets into believing that they were dealing with Complainant, much to their detriment. As Complainant described, Respondent has used the disputed domain name “in the email address ‘account_payable@’ to contact victims by submitting fake purchase orders to certain companies seeking payment for goods or services that the perpetrator claims were provided by Complainant. These fake purchase orders also contain infringing uses of Complainant’s logos and trademarks. Complainant set forth an example of a third party who appears to have been the victim of Respondent’s fraudulent email scheme, as set out above in Section 4. This fraudulent activity demonstrates bad faith. Autodesk, Inc. v. Xiaodong Wang, WIPO Case No. D2014-1690; Valero Energy Corp. v. Lincoln,WIPO Case No. D2015-1550, citing 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 … 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”).
Furthermore, Respondent appears to have provided a false name and contact information when registering the disputed domain name. Respondent’s registration of the disputed domain name prevents Complainant from registering a domain name that includes Complainant’s own VALERO mark.
Respondent has violated paragraph 4(b)(iv) of the Policy. The Panel finds that the disputed 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 disputed domain name be transferred to Complainant.
Sandra A. Sellers
Sole Panelist
Date: September 9, 2016
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