The Complainants are Valero Energy Corporation of San Antonio, Texas, United States of America ("United States"); Valero Marketing and Supply Company of San Antonio, Texas, United States (collectively, the "Complainant"), represented by Fasthoff Law Firm PLLC, United States.
The Respondent is Domains By Proxy LLC of Scottsdale, Arizona, United States / Valero Valero of Montreal, Quebec, Canada. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 27, 2018. On July 30, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 30, 2018, 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 August 7, 2018, 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 August 7, 2018.
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 August 9, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 29, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 30, 2018.
The Center appointed Desmond J. Ryan as the sole panelist in this matter on September 7, 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 Complainant is a United States corporation Incorporated in the State of Delaware. It operates in the United States and elsewhere throughout the world (including in Canada) as a refiner, wholesaler and retailer of petroleum products. According to Fortune Magazine, it is the 31st largest company in the United States. The Complainant has been operating for over 30 years and claims to have spent tens of millions of dollars in advertising, marketing and promoting its VALERO trade mark through a variety of media formats, including print, television, radio, Internet, billboards and signage. The trade mark is prominently displayed on retail service stations across the United States.
Nothing is known of the Respondent save for the information provided in the WhoIs for the disputed domain name.
The disputed domain name was registered on May 28, 2018.
The disputed domain name does not resolve to a website however, according to evidence provided by the Complainant it is being used as an email address for the purpose of perpetrating a fraudulent scheme ("spear-phishing"), whereby the Respondent, using the disputed domain name, targets an individual or class of individuals to obtain personal details potentially leading to identity theft or other fraudulent activity.
In the present case, the Complainant's evidence shows that the disputed domain name has been used to impersonate the Complainant and members of the Complainant's staff on the pretext of offering an interview for employment with the Complainant and asking the targeted individual to complete a questionnaire seeking personal details including telephone numbers, passport numbers and other identifying personal information.
The Complainant is the owner of United States trade mark registrations in International Classes 4, 35, 36, 37, 40 and 42 for trade marks consisting of or including the word "valero". The earliest of these registrations, number 1314604, was registered in January 8, 1985 and claims first use in commerce from February 7, 1983. The Complainant owns the domain name at which it operates its website and which it uses as an email address. The Complainant has been successful in over 80 Complaints under the Policy filed with the Center, including Valero Energy Corporation & Valero Marketing and Supply Company vs. Tom Lincoln,WIPO Case No. D2015-1550 which involved circumstances substantially similar to the present Complaint. 5. Parties' Contentions A. Complainant
The Complainant's submissions may be summarised as follows:
1. It has long established trade mark rights in the trade mark VALERO and those rights have been recognised in several prior decisions under the Policy. The disputed domain name wholly incorporates the Complainant's trade mark and the addition of a hyphen and the letters "ca", a country code for Canada, does not negate the deceptive similarity between the disputed domain name and the Complainant's trade mark.
2. The Respondent has not been licensed or otherwise authorised to use the Complainant's trade mark in the disputed domain name or in any other way.
3. The Respondent is not commonly known by the disputed domain name and the use which is being made of the disputed domain name by the Respondent is not a legitimate noncommercial or fair use. To the contrary, it is used in an identity theft scam to collect personal identifying information from third parties.
4. In view of the Complainant's longstanding and widespread use of its trade mark across the United States and elsewhere, the Respondent must have been aware of the Complainant's use and reputation when registering the disputed domain name and has nevertheless proceeded to register it in bad faith and has subsequently used the disputed domain name in bad faith for the purpose of facilitating its criminal conduct. The Complainant further contends that the Respondent has provided false contact information to the Registrar in an attempt to conceal its true identity. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has provided evidence of longstanding trade mark registrations rights and reputation in the trade mark VALERO. The disputed domain name comprises the trade mark with the addition of a hyphen and the letters "ca". These additions do not serve to materially distinguish the disputed domain name from the Complainant's trade mark or otherwise prevent a finding of substantial identity or confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") which states that "[w]here the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements".
The Panel therefore finds that the disputed domain name is substantially identical, or at least confusingly similar to, a trade mark in which the Complainant has rights. B. Rights or Legitimate Interests
The Complainant has not licensed or otherwise authorised the Respondent to use its trade mark in the disputed domain name. The named registrant on the WhoIs for the disputed domain name is "Valero Valero". The Complainant alleges that the particulars provided are false. The Respondent has not rebutted this allegation and the Panel accepts that submission. In any event, there is no evidence that the Respondent is commonly known by the disputed domain name. The use to which the disputed domain name has been put by the Respondent is neither noncommercial nor fair, nor is it use in the bona fide offering of goods or services. Rather, it is fraudulent use.
The Panel therefore finds that the Complainant has established a prima face case that the Respondent has no rights or legitimate interests in the disputed domain name, which the Respondent has not rebutted.
The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
On the evidence provided by the Complainant, it is clear that the Complainant's name and trade mark are widely used and promoted throughout North America including on retail service stations. Since the WhoIs for the disputed domain name gives the Respondent's address as Montreal, it may be assumed that the Respondent was aware of that reputation at the time of registering the disputed domain name and did so with the intent of using it for an improper purpose. That assumption is confirmed by the subsequent use of the disputed domain name discussed below. Further, the Complainant alleges that the Respondent has provided false contact details to the Registrar. The Respondent had an opportunity to rebut these allegations and it failed to do so. The Panel therefore finds that the disputed domain name was registered in bad faith.
The Complainant has provided evidence showing that the disputed domain name has been used as an email address to impersonate the Complainant and members of its staff with the object of obtaining personal identifying information from targeted third parties who are likely to assume from the disputed domain name and from the nature of the communications made using the disputed domain name that they are dealing with the Complainant. This in itself is fraudulent and in bad faith. It is reasonable to assume that the purpose behind this conduct is to use the information thus obtained for commercial gain. The conduct is therefore, in the opinion of this Panel, conduct which falls squarely within paragraph 4(b)(iv) of the Policy.
The Panel therefore finds that the disputed domain name has been 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 the Complainant.
Desmond J. Ryan AM
Sole Panelist
Date: September 19, 2018
Full & Egal Universal Law Academy