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, United States.
Respondent is Remi Ibrahim of New York City, New York, United States. 2. The Domain Name and Registrar
The disputed 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 March 28, 2018. On March 29, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 29, 2018, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 April 6, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 26, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 27, 2018.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on May 4, 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. 4. Factual Background
The two named Complainants are affiliated enterprises and for purposes of convenience are hereinafter referred to as “Complainant”.
Complainant is the owner of registrations for the word, and word and design, trademark and service mark VALERO on the Principal Register of the United States Patent and Trademark Office (USPTO). Representative of such registrations is word service mark VALERO, registration number 1,314,004, registration dated January 8, 1985, in international class 42, covering “oil and gas exploration, production, processing and distribution services”. Several of Complainant’s VALERO related trademarks registered at the USPTO enjoy incontestable status.
Complainant is a United States based producer, distributor and retailer of petroleum and petroleum-based products. As of February 2018, Complainant was the 37th largest company in the United States according to Fortune magazine. Complainant has used the VALERO trademark in commerce in the United States for more than 30 years, and has expended substantial sums in advertising, marketing and promotion under the VALERO mark. Complainant operates a commercial website at , and uses that domain for corporate email purposes.
According to the Registrar’s verification, Respondent is registrant of the disputed domain name. According to that verification, Respondent registered the disputed domain name on February 12, 2018.
Respondent has used the disputed domain name to create a website that prominently displays Complainant’s trademark and has the appearance of a corporate website of an oil and gas exploration company. Complainant has provided evidence that the appearance of Respondent’s website is substantially copied from the website of another major oil and gas exploration enterprise (not Complainant), with Complainant’s trademark substituted for the name of that third-party enterprise. The email contact address on Respondent’s website is “[…]@”. At the webpage on which contact information appears, there is incorrect information regarding Complainant (copied from the aforementioned third-party website), along with the contact email address associated with the disputed domain name (which lists a Corporate Head Office and post office box of what is said to be Complainant). According to Complainant, Respondent has been using the website identified by the disputed domain name to “engage[] in an elaborate, criminal scheme utilizing a Nigerian/419 advanced fee scam by using the domain name to operate a phishing site”. Having filed a take-down notice with Respondent’s website host, Complainant secured deactivation of the website associated with the disputed domain name.
The registration agreement between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)). 5. Parties’ Contentions A. Complainants
Complainant alleges that it owns rights in the trademark VALERO, and that the disputed domain name is confusingly similar to that trademark. Complainant further alleges rights in word and design trademarks incorporating the term VALERO.
Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name because Respondent: (1) has never been commonly known by the disputed domain name: (2) has not used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services; (3) is not making a legitimate noncommercial or fair use of the disputed domain name; (4) has not been licensed by Complainant to use its trademark, and; (5) is engaged in blatant fraudulent and criminal conduct using the disputed domain name.
Complainant argues that Respondent registered and is using the disputed domain name in bad faith because Respondent: (1) was undoubtedly aware of Complainant’s well-known trademark when it registered the disputed domain name; (2) intentionally registered the disputed domain name for commercial gain to take advantage of Complainant’s fame; (3) provided false contact information to the registrar, and; (4) registered the disputed domain name to prevent Complainant from registering that domain name incorporating its trademark.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of a proceeding that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center formally notified the Complaint to Respondent at the email and physical addresses provided in its record of registration. There is no indication on the record of this proceeding that email transmission of the Complaint to Respondent encountered any difficulty. Express courier delivery services engaged by the Center were unable to deliver the hard copy Complaint to the addresses indicated in the record of registration of the disputed domain name. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps are presumed to satisfy notice requirements.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that:
(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.
Each of the aforesaid three elements must be proved by a complainant to warrant relief. A. Identical or Confusingly Similar
Complainant has provided substantial evidence of rights in the trademark VALERO, including through registration at the USPTO (see Factual Background above), and through use in commerce in the United States. Respondent has not contested those rights. The Panel determines that Complainant has rights in the trademark VALERO.1
The disputed domain name combines abbreviated elements of the principal corporate name of Complainant, Valero Energy Corporation, to form . As a matter of visual first impression “standing alone”, Internet users might not immediately associate the abbreviated combined form of Complainant’s corporate name and trademark with the disputed domain name. However, as used by Respondent in association with a website that prominently displays Complainant’s VALERO trademark, the visual association between the disputed domain name and Complainant’s trademark is manifest. Respondent intended that Internet users associate the disputed domain name with Complainant through the combination of elements of Complainant’s corporate name, which embodies Complainant’s trademark. The manifest intent of Respondent to take unfair advantage of Complainant’s trademark is relevant to a determination of confusing similarity. The Panel determines that the disputed domain name is confusingly similar to Complainant’s trademark within the meaning of the Policy.
The Panel determines that Complainant has rights in the trademark VALERO and that the disputed domain name is confusingly similar to that trademark. B. Rights or Legitimate Interests
Complainant’s allegations to support Respondent’s lack of rights or legitimate interests in the disputed domain name are outlined above in section 5A, and the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent has not replied to the Complaint and has not attempted to rebut Complainant’s prima facie showing of lack of rights or legitimate interests.
Respondent’s use of the disputed domain name to direct Internet users to a website deceptively appearing as a website operated by Complainant does not on its face plausibly suggest rights or legitimate interests.
The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of the registration and use of a domain name in bad faith. These include circumstances indicating that “by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [its] website or other on line location, by creating a likelihood of confusion with [Complainant’s] mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] website or location or of a product or service on [Respondent’s] website or location” (Policy, paragraph 4(b)(iv)).
Respondent acted deliberately to create a website that gives the impression it is operated by Complainant. Respondent has used the disputed domain name as its email contact domain. Complainant alleges that Respondent is using the disputed domain name and the associated website to operate a phishing-based scam. Complainant has not provided direct evidence of Internet users that have “fallen for” the alleged scam. However, Respondent’s registration and use of the disputed domain name in connection with an elaborate website giving the appearance of being operated by Complainant is sufficient to create a presumption that Respondent’s use of the disputed domain name is for an illicit commercial purpose such as that alleged by Complainant. The Panel determines that Respondent has intentionally attempted to attract for commercial gain Internet users to its website by registering and using the disputed domain name that is confusingly similar to Complainant’s trademark so as to create Internet user confusion as to whether Complainant is the source, sponsor, affiliate or endorser of Respondent’s website. Respondent registered and is using the disputed domain name in bad faith within the meaning 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 Complainant.
Frederick M. Abbott
Sole Panelist
Date: May 7, 2018
1 For purposes of administrative efficiency, the Panel does not address other VALERO related trademarks.
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