Complainants are Valero Energy Corporation and Valero Marketing and Supply Company, United States of America (“United States”), represented by Fasthoff Law Firm PLLC, United States.
Respondent is WhoisGuard Protected, WhoisGuard Inc., Panama / kello warmann, 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 May 30, 2019. On May 31, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 31, 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 June 3, 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 June 3, 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 June 6, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 26, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 27, 2019.
The Center appointed Georges Nahitchevansky as the sole panelist in this matter on July 8, 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. 4. Factual Background
Complainant, Valero Energy Corporation, is a Fortune 500 international manufacturer and marketer of transportation fuels, other petrochemical products, and power. It is headquartered in San Antonio, Texas, United States. Complainant Valero Marketing and Supply Company is a wholly owned subsidiary of Complainant Valero Energy Corporation. Complainants Valero Energy Corporation and Valero Marketing and Supply Company and hereinafter collectively referred to as “Complainant.”
Complainant owns and uses the mark VALERO in connection with its products and services. Complainant owns a number of trademark registrations for the VALERO mark in the United States as either a word mark or in a stylized version, the earliest of which issued to registration in 1985 (Registration No. 1,314,004). Complainant also owns and uses the domain name to provide information about Complainant and its products and services, and for email purposes.
Respondent registered the disputed domain name on January 2, 2019. Respondent appears to have used the disputed domain name to send emails as part of a potentially fraudulent scheme. The disputed domain name has not been used in connection with any active website and has simply resolved to a parked page. 5. Parties’ Contentions A. Complainant
Complainant asserts that it owns rights in the distinctive mark VALERO by virtue of Complainant’s use of the mark for over thirty years and Complainant’s ownership of multiple trademark registrations for the VALERO mark that predate Respondent’s registration of the disputed domain name.
Complainant contends that the disputed domain name is confusingly similar to the VALERO mark because it fully incorporates the VALERO mark. Complainant maintains that the addition of the abbreviation “corp” (for “corporation”) and the geographic indicator “USA” do not distinguish the disputed domain name or impact on the confusingly similarity.
Complainant argues that Respondent has no rights of legitimate interests in the disputed domain name as Respondent (i) is not commonly known by the domain name, (ii) has not been authorized or licensed by Complainant to use the VALERO mark, (iii) has provided false contact information to the registrar of the disputed domain name to conceal his or her true identity, and (iv) has not made a legitimate noncommercial or fair use of the disputed domain name, but has instead used the disputed domain as part of a criminal scheme in an attempt to commit wire fraud. In that regard, Complainant maintains that Respondent posed as an employee of Complainant and sent emails to one of Complainant’s suppliers using the email address “procurement@” in order to place an order with the supplier, purportedly on behalf of Complainant, for some Honeywell products.
Lastly, Complainant contends that Respondent registered and used the disputed domain name in bad faith given that Respondent must have been aware of Complainant when Respondent registered the disputed domain name that is based on Complainant’s well-known VALERO name and mark and used such in furtherance of an attempted criminal scheme for Respondent’s profit. Complainant further asserts that Respondent has acted in bad faith by providing false contact information in order to conceal his or her true identity. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
Here, although Respondent has failed to respond to the Complaint, the default does not automatically result in a decision in favor of Complainant, nor is it an admission that Complainant’s claims are true. The burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. A Panel, however, may draw appropriate inferences from a respondent’s default in light of the particular facts and circumstances of the case, such as regarding factual allegations that are not inherently implausible as being true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”); seealso 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 at section 1.2.1. Complainant has provided evidence that it owns and uses the VALERO mark in connection with its petroleum and other products and services. Complainant has also provided evidence that it owns trademark registrations for the VALERO mark in the United States, where Respondent is located, well before Respondent registered the disputed domain name.
With Complainant’s rights in the VALERO mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top-Level Domain such as “.com”) is identical or confusingly similar with Complainant’s mark. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross,WIPO Case No. D2010-0842. The threshold for satisfying this first element is low and generally panels have found that fully incorporating the identical mark in a disputed domain name is sufficient to meet the threshold.
In the instant proceeding, the disputed domain name is confusingly similar to Complainant’s VALERO mark as it incorporates the VALERO mark in its entirety at the head of the disputed domain name. The addition of the abbreviation “corp” and geographic indicator “USA” do not prevent the disputed domain name from being confusingly similar with the Complainant’s VALERO trademark, the dominant component of the disputed domain name. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in Complainant’s VALERO mark and in showing that the disputed domain name is identical or confusingly similar to that 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. 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.
Based on the evidence submitted in this proceeding, it appears that Respondent has only used the disputed domain name for purposes of perpetuating a fraud. Respondent has posed as an employee of Complainant and used the disputed domain name for an email address that made it appear as if the email was coming from Complainant, or an entity related to Complainant, in order to mislead a potential supplier of Complainant into believing it was doing business with Complainant in an attempt to obtain products from the supplier. Respondent’s use of the disputed domain name for such a deceitful purpose does not constitute a legitimate use and does not evidence a bona fide right or legitimate interest of Respondent in the disputed 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, the Panel concludes that Respondent does not have a right or legitimate interest in the disputed 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
Given Respondent’s actions as noted above, and its failure to appear in this proceeding, it is easy to infer that Respondent’s use of the disputed domain name which consists of Complainant’s VALERO mark as part of a fraudulent scheme has been done in bad faith. Given that Complainant had established rights in the VALERO name and mark prior to when Respondent registered the disputed domain name, it is evident that Respondent opportunistically registered the disputed domain name for purposes of perpetuating a fraud at the expense of Complainant and its supplier.
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 disputed domain name be transferred to Complainant.
Georges Nahitchevansky
Sole Panelist
Date: July 22, 2019
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