The Complainant is Valero Energy Corporation, Valero Marketing and Supply Company, United States of America (“United States”), represented by Fasthoff Law Firm PLLC, United States.
The Respondent is John Mai, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 7, 2019. On June 7, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 8, 2019, 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.
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 the Respondent of the Complaint, and the proceedings commenced on June 17, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 7, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 8, 2019.
The Center appointed Sandra J. Franklin as the sole panelist in this matter on July 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. 4. Factual Background
Complainant uses the VALERO mark in the oil and gas industries, and also to operate convenience stores and related businesses. Complainant holds various trademark registrations for the VALERO mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Registration No. 1,314,004, registered January 8, 1985.)
Respondent registered the domain name May 28, 2019, and uses it to conduct a phishing scheme. 5. Parties’ Contentions A. Complainant
1. Respondent’s domain name is confusingly similar to Complainant’s VALERO mark.
2. Respondent does not have any rights or legitimate interests in the domain name.
3. Respondent registered and uses the domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent’s failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. SeeWIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.3. A. Identical or Confusingly Similar
The Panel finds that Complainant has rights in the VALERO mark for purposes of Policy paragraph 4(a)(i) by virtue of its registration of the mark with the USPTO. See WIPO Overview 3.0 section 1.2.1.
Respondent’s domain name simply replaces the letter “o” in Complainant’s VALERO mark with the number “0”. Such a change does not distinguish a domain name from a mark under Policy 4(a)(i). Respondent also adds the generic Top-Level Domain (gTLD) “.com,” which is irrelevant in analyzing the confusing similarity between a mark and domain name. Accordingly, the Panel finds that Respondent’s domain name is confusingly similar to Complainant’s VALERO mark.
The Panel finds that Complainant has satisfied Policy paragraph 4(a)(i). B. Rights or Legitimate Interests
Once Complainant makes a prima facie case that Respondent lacks rights or legitimate interests in the domain name under Policy paragraph 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See WIPO Overview 3.0 section 2.1.
Complainant argues that Respondent has no rights or legitimate interests in the domain name, and is not commonly known by the domain name. Complainant has not authorized Respondent to use its VALERO mark, and the Parties are not affiliated. The WhoIs information for the domain name lists “John Mai” as the registrant. Therefore, the Panel finds that there is no evidence to suggest that Respondent is commonly known by the domain name under Policy paragraph 4(c)(ii). See Moncler S.p.A. v. Bestinfo, WIPO Case No. D2004-1049 (in which the panel noted “that the Respondent’s name is ‘Bestinfo’ and that it can therefore not be ‘commonly known by the Domain Name’ []”).
Complainant demonstrates that the domain name is being used as part of a phishing scheme, wherein Respondent poses as an employee of Complainant in fraudulent emails. The Panel finds that this use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use and thus Respondent has no rights under Policy paragraphs 4(c)(i) and (iii).
The Panel finds that Complainant has satisfied Policy paragraph 4(a)(ii). C. Registered and Used in Bad Faith
Complainant provides evidence that Respondent uses the domain name in fraudulent emails to phish for payments from Internet users. The Panel finds that this use constitutes bad faith under Policy paragraph 4(a)(iii).
Complainant argues that Respondent registered the domain name with full knowledge of Complainant’s rights in the VALERO mark. The Panel notes Complainant’s longstanding, widespread use of the VALERO mark, as well as Respondent’s use of the disputed domain to pose as Complainant’s employee, and finds that this is further evidence of bad faith under Policy paragraph 4(b)(ii). See Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc.,WIPO Case No. D2014-1754) (“the Panel makes its finding regarding bad faith registration byasking whether it is more likely than not from the record of the evidence in the proceeding that Respondent had the ELECTRIC FOOTBALL trademark in mind when registering the Domain Name.”)
Complainant also shows that Respondent provided false contact information to the Registrar in an attempt to conceal its identity, and argues that this is further evidence of bad faith. The Panel agrees. See Home Director, Inc. v. HomeDirector, WIPO Case No. D2000-0111 (finding bad faith use and registration where Respondent “used false and misleading information in connection with the registration of the domain name”).
The Panel also notes that Respondent engages in typosquatting by capitalizing on a common tying error, exchanging the “o” in Complainant’s VALERO mark for a “0”, which is further evidence of bad faith under Policy 4(a)(iii). Respondents who capitalize on common typing errors engage in bad faith registration under Policy 4(a)(iii).”).
The Panel finds that Complainant has satisfied Policy paragraph 4(a)(iii). 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 domain name be transferred to Complainant.
Sandra J. Franklin
Sole Panelist
Date: July 25, 2019
Full & Egal Universal Law Academy