The Complainant is Valero Energy Corporation, Valero Marketing and Supply Company of San Antonio, Texas, United States of America (the “United States”) (hereinafter “Complainant”), represented by Fasthoff Law Firm PLLC, United States.
The Respondent is Contact Privacy Inc. Customer 1244321008 of Toronto, Canada / Alyce Player of Riverview, Florida, United States (hereinafter “Respondent”). 2. The Domain Name and Registrar
The disputed domain name is registered with Google LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 15, 2019. On April 16, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 16, 2019, 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 Complainant on April 17, 2019 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 April 17, 2019.
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 Respondent of the Complaint, and the proceedings commenced on April 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 15, 2019. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 16, 2019.
The Center appointed M. Scott Donahey as the sole panelist in this matter on May 17, 2019. 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.
On May 22, 2019, the Center received an informal communication from Respondent. 4. Factual Background
Complainant is a Delaware corporation headquartered in San Antonio, Texas, involved in the engineering, marketing and supply of energy products. Complainant holds numerous registrations issued by the United States Patent & Trademark Office (“USPTO”) for the trademark VALERO, issued at least as early as January 1985. Complaint Annex 4. Complainant has used the VALERO mark in commerce for at least 31 years and has spent tens of millions of dollars in the advertisement and promotion of the mark. As of April 2019, Fortune magazine recognized Complainant as the 37th largest company in the United States. Complaint, Annex 7.
Complainant is also the registrant of the domain name , and Complainant has used the domain name it registered for company email addresses, and for both intercompany communication, as well as for communication with its customers, vendors, and the general public.
Respondent registered the disputed domain name on April 12, 2019. Complaint, Annex 1. Respondent gives an address in Riverview, Florida, United States, and the Privacy Service used is located in Toronto, Ontario, Canada. Respondent has used the disputed domain name to resolve to a parking page, which does not appeared to be otherwise utilized. Complaint, Annex 6. In addition, Respondent has posed as one of Complainant’s employees, using the employee’s name in emails and letters in attempts to convince a Valero customer to wire money allegedly due in payment of a fraudulent invoice apparently created by Respondent. Complaint, Annex 5. 5. Parties’ Contentions A. Complainant
Complainant alleges that the disputed domain name is confusingly similar to Complainant’s VALERO trademark, that Respondent has no rights or legitimate interests in respect of the disputed domain name, and that Respondent has registered and is using the disputed domain name in bad faith. B. Respondent
Respondent did not substantially reply to Complainant’s contentions. However, on May 22, 2019, Respondent submitted an informal email to the Center. The email did not address the elements of the Policy. 6. Discussion and Findings
“A Panel shall 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.”
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The disputed domain name consists of its famous trademarked name VALERO together with the letter “s” followed by the English word “energy,” a word that is part of Complainant’s company name (Valero Energy Corporation). Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademarks. B. Rights or Legitimate Interests
While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.
In the present case Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain name and Respondent has failed to assert any such rights. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
Respondent is using the disputed domain name to resolve to a parking page which is not in use for any purpose. Moreover, Respondent is posing as one of Complainant’s employees, using Complainant’s employee’s name on letters and emails seeking to extort moneys from one of Complainant’s customers by requesting payments for invoices issued under Complainant’s name and trademark that bare no relation to any services or goods supplied by Complainant. Therefore, the Panel 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 Complainant.
M. Scott Donahey
Sole Panelist
Date: May 22, 2019
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