The Complainants are Valero Energy Corporation of San Antonio, Texas, United States of America (“United States”) and Valero Marketing and Supply Company of San Antonio, Texas, United States (collectively referred to as “the Complainant”), represented by Fasthoff Law Firm PLLC, United States.
The Respondent is Riaat Benn of Brookings, South Dakota, United States. 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 August 21, 2018. On August 22, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 23, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details of the registrant.
The Center verified that the Complain 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 31, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 20, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 21, 2018.
The Center appointed William F. Hamilton as the sole panelist in this matter on October 5, 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 has sold a variety of oil, gasoline, and related retail products and services for over 30 years. The Complainant owns numerous registrations with the United States Patent and Trademark Office for the mark VALERO (the “Mark”) in various product categories with the original registration dating back to January 8, 1985 (registration number 1,314,004). The Complainant “has spent tens of millions of dollars advertising, marketing, and promoting” its products and services under the Mark. The Complainant owns and operates the domain name . See e.g. Valero Energy Corporation and Valero Marketing and Supply Company v. David Wayne,WIPO Case No. D2016-1461.
The disputed domain name was registered on July 31, 2018. The disputed domain name redirects Internet users to the Complainant’s website. The Complainant’s evidence shows that the disputed domain name has been used in connection with a fraudulent email scheme. 5. Parties’ Contentions A. Complainant
The Complainant asserts the disputed domain name is confusingly similar for the purposes of this proceeding because the disputed domain name is comprised of the Mark plus the term “usa” separated by a hyphen. The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name or the Mark as the Respondent has never conducted any bona fide business utilizing the disputed domain name or the Mark. Finally, the Complainant asserts that the disputed domain name was registered and is being used in bad faith to facilitate a criminal email scheme. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel finds the disputed domain name is confusingly similar to the Complainant’s Mark. The disputed domain name incorporates the Mark in its entirety and then adds the term “usa” preceded by a hyphen. The additional term “usa” does not prevent confusingly similarity between the Mark and the disputed domain name. Section 1.8 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) (“Where 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”). Nor does the use of a hyphen negate the confusing similarity between the Mark and the disputed domain name. Chernow Communications, Inc. v. Jonathan D. Kimball,WIPO Case No. D2000-0119 (the use or absence of punctuation marks, such as hyphens, does not avoid a finding of confusing similarity).
The Complainant has met its burden of proof under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has specifically disavowed providing any license or authorization to the Respondent to use the Mark or the disputed domain name. Moreover, the Respondent has failed to provide any evidence that the Respondent has been known by the Mark or any of its components while conducting legitimate business activities. World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe,WIPO Case No. D2008‑0642. Evidently, the use of the disputed domain name in connection with a fraudulent email scheme cannot give rise to any rights or legitimate interests on the part of the Respondent.
The Complainant has met its burden of proof under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The evidence submitted by the Complainant and unrebutted by the Respondent, demonstrates that the Respondent has attempted to induce unsuspecting persons to transfer money or other items of value to the Respondent by using an email address associated with the disputed domain name to trick unsuspecting companies into believing the company was dealing with the Complainant. The evidence before the Panel demonstrates that the disputed domain name was registered and used in bad faith as part of a fraudulent scheme. NCI Group, Inc. v. Natasha Godinese,WIPO Case No. D2015-0145.
Beyond this evidence, the fact that the disputed domain adopts the Mark and is merely followed by the term “usa” gives rise to a reasonable inference that the disputed domain name was designed to attract unsuspecting Internet users to the Respondent’s website or otherwise deprive the Complainant of the use of the disputed domain name. It is inconceivable that the Respondent innocently picked the Complainant’s Mark to compose the disputed domain name. The most modest check of the Internet would have disclosed the Complainant’s Mark and business operations. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 (only feasible explanation for registration of the domain name is intention to cause confusion, mistake and deception).
The Complainant has met its burden of proof under paragraph 4(a)(iii) 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 the Complainant.
William F. Hamilton
Sole Panelist
Date: October 18, 2018
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