Complainant is 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.
Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama / Evan Schwechter, SW Valeroy Corpers of Scarsdale, New York, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 7, 2018. On February 7, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 7, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on February 12, 2018 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 February 14, 2018.
The Center verified that the Complaint together with 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 February 19, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 11, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 12, 2018.
The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on March 16, 2018. 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.
In accordance with the Rules, paragraph 11, the language of the proceeding will be in English as the Registration Agreement is in English. 4. Factual Background
Complainant owns U.S. Trademark Registration Nos. 1314004, 2656971, and 3108715 for the VALERO trademark, and U.S. Trademark Registration Nos. 2656973, 2927757, 2938790, and 3688322 for the V VALERO and VALERO V marks, as well as other registrations embodying the VALERO mark. Complainant has continuously used the VALERO mark in commerce for at least thirty-one years.
The Domain Name was registered on December 15, 2017. At the time of this decision, the Domain Name resolves to a server error message. From the evidence submitted by Complainant, it appears that the Domain Name previously resolved to a parked page with sponsored links provided by the Registrar.
Complainant’s trademark registrations, some registered for decades, long predate the Domain Name registration. Complainant’s domain name also long predates the Domain Name registration, and has been used continuously for many years for its Internet website, as well as company email addresses, through which it communicates internally, with customers, vendors, and the public in general. 5. Parties’ Contentions A. Complainant
Complainant contends that it has satisfied all three elements required under the Policy for a transfer of the Domain Name. In particular, Complainant contends:
The Domain Name is confusingly similar to the trademarks owned by Complainant because it is comprised of Complainant’s VALERO mark in its entirety, plus an extra “y” between the mark and the generic “corp” abbreviation for “corporation”, along with the generic Top-Level Domain (“gTLD”) “.com”.
Respondent has no rights or legitimate interests in or to the Domain Name. Respondent has never been commonly known by the Domain Name; has not used or made demonstrable preparations to use the Domain Name; and is not making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain. Complainant has not licensed to Respondent the right to use the VALERO mark, and Respondent is not otherwise authorized to act on Complainant’s behalf.
To the contrary, Respondent is engaged in an elaborate, criminal scheme utilizing a Nigerian/419 advanced fee scam, in this case attempting to collect personal identifying information, and to persuade victims to send money to Respondent in connection with a job offer scam. Emails and fake employment interview documents were sent by Respondent to one of Respondent’s victims in which Respondent extends fake job offer to the victim, a letter of invitation that purports to be signed by a Valero employee named “Dr. Julia L. Walsh, Phd.”, provides a fake employment contract, and gives instructions for the victim to make travel arrangements from his home country to Valero’s offices in London. The catch is that the victim must use the Respondent’s fake “travel agency” when making travel arrangements, and this permits Respondent to obtain the victim’s personal and credit card information. All of these documents are fake and they contain unauthorized, infringing uses of Complainant’s trademarks. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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.
Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states:
“Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding?
Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true.”
Thus, although in this case Respondent has failed to respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340. A. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has provided evidence that it has rights in the VALERO mark which has been registered in the United States well before Respondent registered the Domain Name.
With Complainant’s rights in the VALERO mark established, the remaining question under the first element of the Policy is whether the Domain Name (typically disregarding the gTLD “.com”) is identical or confusingly similar to Complainant’s mark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross,WIPO Case No. D2010-0842.
In the instant proceeding, the Domain Name is confusingly similar to Complainant’s VALERO mark as it incorporates the VALERO mark in its entirety as the first element of the Domain Name. The addition of the letter “y” and the descriptive term “corp” does not distinguish the Domain Name from Complainant’s VALERO mark. See, e.g., Wingstop Restaurants Inc. v. Domains By Proxy, LLC / Johnson Millner / Matthew Alvarez,WIPO Case No. D2016-1004. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in the VALERO mark and in showing that the Domain Name is identical or confusingly similar to this trademark. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
From the record in this case, it is evident that Respondent was, and is, aware of Complainant and its VALERO mark and does not have any rights or legitimate interests in the Domain Name. Respondent has not made any bona fide or fair use of the Domain Name in connection with any product or service. Rather, Respondent has used the Domain Name to attempt to conduct a phishing scam. Such use of the Domain Name constitutes fraud and does not, and cannot, constitute a bona fide use or legitimate interest in the Domain Name.
Given that Complainant has established with sufficient evidence that it owns rights in the VALERO mark, and given Respondent’s above noted actions and failure to file a response, the Panel concludes that Respondent does not have a right or legitimate interest in the Domain Name and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case. C. Registered and Used in Bad Faith
The Panel finds that Respondent’s actions indicate that Respondent registered and is using the Domain Name in bad faith.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:
“(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 website or location or of a product or service on your website or location.”
In the instant proceeding, Respondent registered the Domain Name that fully incorporates Complainant’s VALERO mark followed by the letter “y” plus the descriptive term “corp” which create confusion by suggesting to consumers that the Domain Name relates to Complainant. See, e.g., Wingstop Restaurants Inc. v. Domains By Proxy, LLC / Johnson Millner / Matthew Alvarez,WIPO Case No. D2016-1004. Respondent has sent at least one email using the “hrdepartment@” email address which seeks to leverage the connection between the Domain Name and the VALERO mark, as well as other usages of the mark in the body of the email itself, in an attempt to defraud a third party. Specifically, Respondent wrote:
“We at Valero Would like to say Thanks for your interest in Valero Energy UK Family. Be advised that your application submitted through LinkedIn has been evaluated and you have been shortlisted for a Job interview. Please go through the attachments for details of your invitation.”
Accordingly, there is no doubt that Respondent was well aware of Complainant and its VALERO mark when Respondent registered the Domain Name. And given the uncontested evidence showing that Respondent has used the Domain Name to make fraudulent requests to third parties seeking personal and financial information, it is obvious that Respondent specifically targeted Complainant and its VALERO mark, and has done so opportunistically and willfully.
The use of the Domain Name for a scam demonstrates bad faith registration and use for Policy purposes. This brings this case within the example of evidence of bad faith in paragraph 4(b)(iv) of the Policy, that “by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [his] 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 [his] web site or location or of a product or service on [his] web site or location.” See, e.g., Valero Energy Corporation and Valero Marketing and Supply Company v. Rodney Ballard,WIPO Case No. D2017-0086.
Accordingly, the Panel finds that Complainant succeeds under this 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 Domain Name be transferred to Complainant.
Brian J. Winterfeldt
Sole Panelist
Date: March 30, 2018
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