Complainants are Valero Energy Corporation and Valero Marketing and Supply Company, both of San Antonio, Texas, United States of America (“United States”), represented by Fasthoff Law Firm PLLC, United States.1
Respondent is Domain Admin, Privacy Protection Services, Inc. d/b/a PrivacyP of Nobby Beach, Queensland, Australia / Valero Energy of Bayselya, Nigeria. 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 September 18, 2016. On September 19, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 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. The Center sent an email communication to Complainant on September 20, 2016, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on September 20, 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 September 22, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 12, 2016. On September 22, 2016, Respondent sent an informal email communication to the Center. Respondent did not submit a formal response. Accordingly, the Center notified the Parties of the commencement of the panel appointment process on October 13, 2016.
The Center appointed Isabel Davies as the sole panelist in this matter on October 19, 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 Valero Energy Corporation is a major corporation operating in the oil and gas exploration, production and distribution services and owns registered trademarks for VALERO and VALERO ENERGY CORPORATION in the United States and around the world dating from as early as 1982. Complainant Valero Marketing and Supply Company is a wholly-owned subsidiary of Complainant Valero Energy Corporation.
The Disputed Domain Name was registered on December 8, 2015 and does not resolve to an active webpage. 5. Parties’ Contentions A. Complainant
The Disputed Domain Name is identical or confusingly similar to Complainant’s marks
Complainant submits that proof of a United States federal trademark registration creates a rebuttable presumption that a complainant has rights in a mark. In the Complaint it provides evidence of registered trademarks for VALERO, VALERO ENERGY CORPORATION, and other VALERO marks (collectively, “the Trademarks”). Complainant states that it has continuously used the VALERO ENERGY CORPORATION mark in commerce for at least 34 years, has used the VALERO mark in commerce for at least 31 years, and 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. Complainant states that, as a result of its significant monetary investment and continuous use of the Trademarks to advertise, market and promote the Trademarks they have developed extensive goodwill and favorable consumer recognition.
Complaint states that it 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.
Complainant states that other Panels have previously determined that Complainant has rights in certain of the Trademarks and cites many UDRP decisions including Valero Energy Corporation, Valero Marketing and Supply Company v. Bargin Register, Inc. - Client Services, URLBrokeringcom, and Telecom Tech Corp.,WIPO Case No. D2012-2399; Valero Energy Corporation, Valero Marketing and Supply Company v. ICS INC. / Contact Privacy, Inc. Customer 013720907,WIPO Case No. D2012-2398 and Valero Energy Corporation and Valero Marketing and Supply Company v. Privacy P and Maying Joe,WIPO Case No. D2012-0939. Complainant submits that the Trademarks are both distinctive and famous within the meaning of United States trademark law.
Complainant avers that the Disputed Domain Name is confusingly similar to the Trademarks owned by Complainant because it is comprised of Complainant’s VALERO and VALERO ENERGY marks in their entirety, with the exception that the “L” has been replaced with an “I” (which has the visual appearance of a lower case “L”); and the generic Top-Level Domain (“gTLD”) extension, “.com”.
It refers to Société Nationale des Chemins de Fer Français, SNCF v. Transure Enterprise Ltd / A Domain Privacy,WIPO Case No. D2011-0447 (“the Panel does not consider, when analyzing the identity or similarity, the suffix, in this case “.com,” because it is a necessary component of the Domain Name and does not give any distinctiveness.”). Complainant therefore submits that the Disputed Domain Name is confusingly similar to Complainant’s mark under the Policy, paragraph 4(a)(i).
Respondent has no rights or legitimate interests in the Disputed Domain Name
Complainant submits that Respondent has no rights or legitimate interests in or to the Disputed Domain Name. It submits that Respondent has never been commonly known by the Disputed Domain Name; has not used or made demonstrable preparations to use it; and is not making a legitimate noncommercial or fair use of it 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.
On the contrary, Complainant states, Respondent is engaged in an elaborate criminal scheme utilizing a Nigerian/419 advanced fee scam. It states that Respondent impersonates Complainant’s Vice President- Alternative Fuels and contacts victims to offer them a bogus “partnership” to “negotiate and represent Complainant internationally on the crude oil trade network. Complainant exhibits the “partnership” agreement which purports to be signed by the Vice President. Documents are exhibited that contain unauthorized, infringing uses of Complainant’s trademarks. Complainant states that Respondent used the domain name but, the documents annexed indicate that the reply to the email which appeared to contain was redirected to an email address associated with the Disputed Domain Name.
Complainant also states that the website to which the Disputed Domain Name resolves is a “dead site.” At the time Complainant made the search which is exhibited, the visitor received the messages “Server Not Found.” The Disputed Domain Name is inactive. Complainant therefore submits that “there is nothing on the record showing that Respondent presently is preparing to use the corresponding Disputed Domain Name for any legitimate purpose, given the full incorporation of Complainant’s mark in the Disputed Domain Name, and the fact that Respondent is totally unrelated to Complainant.” Arkema France v. Arkema Global, Arkema Group, Arkema Corp and Arkema Cloud,WIPO Case No. D2014-2010. See also Valero Energy Corporation and Valero Marketing and Supply Company v. Lisa Katz, Domain protection LLC / Domain Hostmaster, Customer ID: 62520014085963,WIPO Case No. D2015-0787 (transferring domain name under similar circumstances).
Complainant further submits that this type of conduct by Respondent does not constitute a bona fide offering of goods or services under the Policy, paragraph 4(c)(i) or a legitimate noncommercial or fair use under the Policy, paragraph 4(c)(iii) and cites, among other cases, Valero Energy Corporation, Valero Marketing and Supply Company v. Domain Name Proxy, LLC, Navigation Catalyst Systems, Inc.,WIPO Case No. D2011-1227; Valero Energy Corporation, Valero Marketing and Supply Company v. Transure Enterprise Ltd / A Domain Privacy;WIPO Case No. D2011-0920.
Complainant submits that it is, on the contrary, blatant fraudulent and criminal conduct and that Respondent has no rights or legitimate interests in or to the Disputed Domain Name.
Evidence of Respondent’s bad faith registration and use
As Complainant has owned and continually used the Trademarks in commerce for more than 30 years it submits that, as at the time Respondent registered the Disputed Domain Name on December 8, 2015, Complainant was listed as the thirteenth largest company in the United States according to Fortunemagazine, Respondent was undoubtedly aware of Complainant’s prominence in the business world and intentionally registered, for commercial gain, the Disputed Domain Name that is comprised of Complainant’s Trademarks.
Complainant submits that, in addition to the criminal conduct described above, it is well established that “the concept of a domain name ‘being used in bad faith’ is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.” Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
Complainant states that Respondent has registered the Disputed Domain Name which prevents Complainant from registering a domain name that embodies the VALERO mark owned by Complainant. Panels have concluded “lack of respondent’s rights or legitimate interests in the domain name is undoubtedly indicative of registration in bad faith.” Puerto 80 Projects SLU v. Domains By Proxy, LLC, DomainsByP and Jupiter Miguel Tarrero Gallo,WIPO Case No. D2012-1563 (citing J. García Carrión, SA v. Mª José Catalán Frías,WIPO Case No. D2000-0239). B. Respondent
On September 22, 2016, Respondent wrote saying “What is the meaning of all this?” Respondent did not submit a formal response. 6. Discussion and Findings
The Policy establishes three elements, specified in paragraph 4(a) that must be established by Complainant to obtain relief. These elements are:
(i) The Disputed Domain Name is identical or confusingly similar to the trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interest in respect of the Disputed Domain Name;
(iii) The Disputed Domain Name has been registered and is being used in bad faith.
Each of these elements will be addressed below.
Complainant must establish these elements even if Respondent does not reply (see The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064). However, under paragraph 14(b) of the Rules, the Panel is entitled to draw such inferences as it considers appropriate from a party’s failure to comply with any provision of or requirement under, the Rules, including Respondent’s failure to file a Response.
In the absence of a Response, the Panel may also accept as true the factual allegations in the Complaint (see ThyssenKrupp USA, Inc. v. Richard Giardini,WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009)).
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted. As the proceeding is an administrative one, Complainant bears the onus of proving its case on the balance of probabilities. Complainant must therefore establish all three of the elements specified in paragraph 4(a) of the Policy on the balance of probabilities before a decision can be made to cancel or transfer the Disputed Domain Name. A. Identical or Confusingly Similar
The Panel accepts that Complainant has substantial good will in the trademarks VALERO and VALERO ENERGY in the light of the use and promotion of the marks which have also been registered as trademarks in the United States and around the world from as early as 1982.
The Panel accepts that the Disputed Domain Name is confusingly similar to the Trademarks owned by Complainant because it is comprised of Complainant’s VALERO and VALERO ENERGY marks in their entirety, with the exception that the “L” has been replaced with an “I” (which has the visual appearance of a lower case “L”) and the gTLD “.com”. Société Nationale des Chemins de Fer Français, SNCF v. Transure Enterprise Ltd / A Domain Privacy, supra (“the Panel does not consider, when analyzing the identity or similarity, the suffix, in this case “.com,” because it is a necessary component of the Domain Name and does not give any distinctiveness.”).
The apparent misspelling has been found by many previous UDRP panels to render a domain name confusingly similar to a complainant’s marks.
The Panel refers to Tumblr, Inc. v. Jingsheng Feng,WIPO Case No. D2013-0454 (finding that “[i]n light of the distinctiveness of the…mark and of its renown this apparent misspelling…of a single letter that could easily be mis-typed appears to the Panel to be more than just a co-incidence and amounts to a classic example of typo-squatting”). UDRP panels have consistently ruled that domain names which misspell a well-known mark are deemed confusingly similar to that mark. ZB, N.A., dba Zions First National Bank v. Lee Houchang,WIPO Case No. D2016-1079.
The Panel finds that the Disputed Domain Name is confusingly similar to Complainant’s mark under Policy 4(a)(i). B. Rights or Legitimate Interests
The Panel accepts that Respondent has never been commonly known by the Disputed Domain Name; has not used or made demonstrable preparations to use it; and is not making a legitimate noncommercial or fair use of the it without intent for commercial gain. The Panel accepts that 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.
The Panel accepts Complainant’s evidence of Respondent’s scheme in which Respondent impersonates Valero’s Vice President-Alternative Fuels and contacts victims to offer them a “partnership” to “negotiate and represent Complainant internationally on the crude oil trade network.”
The Panel accepts that “there is nothing on the record showing that Respondent presently is preparing to use the corresponding Disputed Domain Name for any legitimate purpose, given the full incorporation of Complainant’s mark in the Disputed Domain Name, and the fact that Respondent is totally unrelated to Complainant.” Arkema France v. Arkema Global, Arkema Group, Arkema Corp and Arkema Cloud,WIPO Case No. D2014-2010.
This type of conduct by Respondent does not constitute a bona fide offering of goods or services under Policy 4(c)(i) or a legitimate noncommercial or fair use under Policy 4(c)(iii). See Twitter, Inc. v. Moniker Privacy Services/ accueil des solutions inc,WIPO Case No. D2013-0062.
The Panel accepts that Respondent has no rights or legitimate interests in or to the Disputed Domain Name as the conduct described by Complainant does not constitute a bona fide offering of goods or services under the Policy, paragraph 4(c)(i) or a legitimate noncommercial or fair use under the Policy, paragraph 4(c)(iii). Valero Energy Corporation, Valero Marketing and Supply Company v. Domain Name Proxy, LLC, Navigation Catalyst Systems, Inc., supra; Valero Energy Corporation, Valero Marketing and Supply Company v. Transure Enterprise Ltd / A Domain Privacy; supra.
The Panel finds that Respondent has no rights or legitimate interests in or to the Disputed Domain Name. C. Registered and Used in Bad Faith
The Panel accepts that, at the time Respondent registered the Disputed Domain Name on December 8, 2015, Complainant was listed as the thirteenth largest company in the United States according to Fortune magazine and that Respondent was undoubtedly aware of Complainant’s prominence in the business world and intentionally registered, for commercial gain, the Disputed Domain Name comprised of Complainant’s Trademarks.
The Panel accepts that use of the Disputed Domain Name for the email scheme evidenced in the Complaint constitutes use in bad faith.
Moreover, the Panel also accepts that Respondent may have registered the Disputed Domain Name to prevent Complainant from registering a domain name that reflects its VALERO mark and that the holding of it with no access to any website adds to this conclusion. Telstra Corporation Limited v. Nuclear Marshmallows, supra. Here, Respondent has registered a domain name that prevents Complainant from registering a domain name that embodies the VALERO mark owned by Complainant. Panels have concluded “lack of respondent’s rights or legitimate interests in the domain name is undoubtedly indicative of registration in bad faith.” Puerto 80 Projects SLU v. Domains By Proxy, LLC, DomainsByP and Jupiter Miguel Tarrero Gallo, supra (citing J. García Carrión, SA v. Mª José Catalán Frías, supra).
The Panel finds that the Disputed Domain Name has been 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 Complainant.
Isabel Davies
Sole Panelist
Date: October 30, 2016
1 For ease of reference, Complainants will hereafter be collectively referred to as “Complainant” unless otherwise specified.
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