The Complainants are 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.
The Respondent is Domain Hostmaster, Customer ID 60520148303691 of Fortitude Valley, Australia / Lisa Katz of Dallas, Texas, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with F (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 7, 2017. On January 9, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 10, 2017, 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 the Complainant on January 16, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 17, 2017.
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 the Respondent of the Complaint, and the proceedings commenced on January 17, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 6, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 8, 2017.
The Center appointed Gary J. Nelson as the sole panelist in this matter on February 20, 2017. 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
The Complainants are the owners of numerous trademark registrations for the VALERO word mark and for marks incorporating the VALERO mark. The Complainants use their VALERO trademark in connection with oil and gas services and related credit card services. Specifically, the Complainants own at least the following United States trademark registration:
Country/Territory
Registration No.
Mark
Classes
Date of Registration
United States
1314004
VALERO
42
January 8, 1985
The disputed domain name, , appears was registered on November 2, 2005, and resolves to a website with multiple click-through links related to credit card services. 5. Parties’ Contentions A. Complainants
The Complainants own rights in the VALERO trademark, and have been continuously using this trademark in commerce in the United States for at least 31 years. During this 31 year period, the Complainants have spent tens of millions of dollars advertising, marketing, and promoting the VALERO brand 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.
The Complainants own registered trademarks in the United States for the VALERO mark for goods/services, including the distribution of oil and gasoline, convenience store services, and credit card services.
The Complainants have been using their VALERO trademark since at least as early as 1983.
The disputed domain name is confusingly similar to the Complainants’ VALERO trademark.
The Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent registered and is using the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
In view of the Respondent’s failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainants’ undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and shall draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires that the Complainants must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
(ii) The Respondent has no rights or legitimate interests in 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
The Complainants have established that they own rights in the VALERO trademark and the disputed domain name is confusingly similar to the Complainants’ VALERO trademark.
The Complainants own numerous registrations for the VALERO trademark throughout the world. Specifically, the Complainants own United States Trademark Registration No. 1314004 for the VALERO mark.
Accordingly, the Complainants have established rights in their VALERO trademark pursuant to Policy, paragraph 4(a)(i). See Janus International Holding Co. v. Scott Rademacher,WIPO Case No. D2002-0201 (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. The respondent has the burden of refuting this presumption).
The disputed domain name is confusingly similar to the Complainants’ VALERO trademark because the disputed domain name incorporates the entirety of the Complainants’ VALERO trademark and merely adds the generic or descriptive terms “gas” and “card,” along with the generic Top-Level “.com”. Neither the addition of dictionary or merely descriptive terms to a well-known mark or the addition of a generic Top-Level Domain is sufficient to create a distinct domain name capable of overcoming a proper claim of confusingly similarity. See Arthur Guinness Son & Co. (Dublin) Limited v. Tim Healy/BOSTH,WIPO Case No. D2001-0026 (finding confusing similarity where the disputed domain name contains the identical mark of the complainant combined with a generic word or term); see also, Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil,WIPO Case No. D2000-1409 (finding that “[n]either the addition of an ordinary descriptive word […] nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy, paragraph 4(a)(i) is satisfied).
In regard to the Complainants’ VALERO trademark, the addition of the words “gas” and “card” tagged on to the end of the mark is insufficient to overcome the Complainants’ allegation of confusing similarity.
Confusing similarity is especially acute in this case where the generic or merely descriptive terms (i.e., “gas” and “card”), simply describes a product/service provided by the Complainants (i.e., specialized gasoline credit cards and related services). See ACCOR, Société Anonyme à Directoire et Conseil de surveillance v. Tigertail Partners,WIPO Case No. D2002-0625 (“confusion is only heightened when the generic word added by Respondent is descriptive of the Complainant’s goods or services marketed in relation to the trademark”).
The Panel therefore finds that the Complainants have proven the requirement of Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent has failed to file a Response, which can suggest, in appropriate circumstances, that a respondent lacks rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse.,WIPO Case No. D2000-1221 (finding that a respondent’s failure to respond in a UDRP proceeding can be construed, in appropriate circumstances, as an admission that it has no rights or legitimate interests in a domain name).
By not filing a Response, the Respondent has not provided any evidence that it is commonly known by the disputed domain name, or that it is commonly known by any name consisting of, or incorporating the terms “valero,” “gas,” “card,” or any combination of these words. In Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403, the panel held that a lack of rights or legitimate interests could be found where (1) the respondent is not a licensee of the complainant; (2) the complainant’s rights in its related trademarks precede the respondent’s registration of the domain name; and (3) the respondent is not commonly known by the disputed domain name. The Panel notes that by not submitting a Response, the Respondent also failed to provide any evidence establishing rights or legitimate interests.
The disputed domain name resolves to a website featuring numerous click-through links for traditional credit cards and related products/services. Because the Complainants also promote and distribute credit cards and credit card services, the Panel concludes that the Respondent is using the disputed domain name in association with a website that competes directly with the Complainants’ business interests. Furthermore, it is likely the Respondent is receiving click-through fees each time an Internet user accesses the website at “www.” and clicks on any of the numerous links available. The use of another’s well-known trademark for the purpose of deriving this type of commercial benefit is evidence that the Respondent has no rights or legitimate interests in the disputed domain name.
Accordingly, the Panel concludes the Respondent is not using the disputed domain name in association with a bona fide offering of goods and services pursuant to Policy, paragraph 4(c)(iii). See America Online, Inc. v. Xiangfeng Fu,WIPO Case No. D2000-1374 (“it would be unconscionable to find […] a bona fide offering of services in a respondent’s operation of [a] web-site using a domain name which is confusingly similar to the complainant’s mark and for the same business”). The Panel furthermore finds no other circumstances giving rise to any Respondent rights or legitimate interests in the disputed domain name.
The Panel therefore finds that the Complainants have proven the requirement of Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith
The Panel finds that the Respondent registered and is using the disputed domain name in bad faith.
The Panel finds that the Respondent likely chose the disputed domain name with full knowledge of the Complainants’ rights in the VALERO trademark and specifically the Complainants’ rights in the VALERO trademark for use in association with credit cards services. The Panel draws this conclusion based on the fact the website associated with the disputed domain name specifically provides click-through links to websites of the Complainants’ competitors offering competing credit cards and credit card services. Also, the relevant priority dates for the Complainants’ trademark registrations precede the date upon which the disputed domain name was registered (i.e., 2005). See T, Inc. v. Daniel Deamone,WIPO Case No. D2001-1066 (finding bad faith where the respondent had actual and constructive notice of the complainant’s trademarks registered in the United States); see also Kraft Foods (Norway) v. Fredrik Wide and Japp Fredrik Wide,WIPO Case No. D2000-0911 (“the fact that Respondent [chose] to register a well-known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name at issue”).
Respondent is using the Complainants’ VALERO trademark to attract Internet users to a website at the disputed domain name . As indicated above, this website features click-through links including products that compete directly with the products sold and/or offered by the Complainants under their VALERO trademark. This is sufficient evidence of bad faith. See Lilly ICOS LLC v. Tudor Burdern d/b/a BM Marketing/Burden Marketing,WIPO Case No. D2005-0313.
The Panel therefore finds that the Complainants have proven the requirement of Policy, paragraph 4(a)(iii). 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 Complainants.
Gary J. Nelson
Sole Panelist
Date: February 27, 2017
Full & Egal Universal Law Academy