Complainant is Valero Energy Corporation and Valero Marketing and Supply Company, United States of America (“United States” or “U.S.A.”), represented by Fasthoff Law Firm PLLC, United States.
Respondent is Domain Admin, Privacy Protect, LLC (PrivacyP), United States / Name Redacted1 . 2. The Domain Name and Registrar
The disputed domain name (the “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 July 18, 2019. On July 19, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 20, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on July 24, 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 the same day.
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 July 30, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 19, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 20, 2019.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on August 29, 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 operates in the field of oil and gas exploration, production, processing, and distribution services. Complainant owns United States Trademark Reg. Nos. 1,314,004 (registered January 8, 1985), 2,656,971 (registered December 3, 2002), and 3,108,715 (registered June 27, 2006) for the VALERO Mark (or the “Mark”). Complainant has continuously used the VALERO Mark in commerce for at least 31 years. During this time, Complainant has spent tens of millions of dollars advertising, marketing, and promoting the Mark worldwide in a wide variety of media formats, including print, television, radio, Internet, billboards, and signage, among others. Complainant further has continuously owned and operated an Internet website under the domain name for many years, and utilizes that domain name for company email addresses through which it communicates internally, with customers, vendors, and the public in general.
The Domain Name was registered on June 16, 2019. It does not resolve to an active website. 5. Parties’ Contentions A. Complainant
The Domain Name is confusingly similar to the Mark because it is comprised of a misspelled version of Complainant’s Mark in its entirety—the entire mark plus an additional “a”—along with the generic Top-Level Domain (“gTLD”), “.com”.
Respondent has never been commonly known by the Domain Name; has not used or made demonstrable preparations to use the domain; and is not making a legitimate noncommercial or fair use of the domain without intent for commercial gain. Complainant has not licensed to Respondent the right to use the Mark, and Respondent is not otherwise authorized to act on Complainant’s behalf. Respondent is engaged in an elaborate, criminal scheme in an attempt to commit wire fraud as shown by an email exchange that purports to come from Valero employee from the email address [...]@. The person pretending to be an employee of Complainant is actually Respondent, who is not affiliated in any way with Complainant.
The email includes an exchange between Respondent and his intended victim, in which Respondent tries to lure a third party into believing that it will receive a four year-long contract to supply a certain chemical to Valero. The email address used by Respondent to engage in this fraudulent activity is the [...]@ email address, which incorporates the infringing Domain Name. All uses of the Valero’s Mark in the Domain Name, emails, and fake contract documents constitute infringement of that Mark. Also, the Domain Name resolves to a parking page where it is not being used for any purpose.
Complainant has owned and continually used the VALERO Mark in commerce for more than 30 years. When the Domain Name was registered on June 16, 2019, Complainant was listed as the 37th largest company in the United States according to Fortune magazine. Respondent was undoubtedly aware of Complainant’s prominence in the business world when it registered the Domain Name. Notwithstanding that, Respondent intentionally registered, for commercial gain, a domain name that is comprised of Complainant’s Mark. In addition to the criminal conduct and non-use of the Domain Name for a website as described above, it is well established that the concept of a domain name “being used in bad faith” is not limited to positive action; inaction is within the concept. Here, Respondent has registered a domain name that prevents Complainant from registering a domain name that embodies the VALERO Mark. Further, Respondent has provided false contact information to the registrar in an attempt to conceal his or her true identity, both of which constitute bad faith under the Policy. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Complainant has established rights in the VALERO Mark by virtue of its trademark registrations set forth above.
The Panel further finds that the Domain Name is confusingly similar to the VALERO Mark. The Domain Name incorporates the entirety of the Mark with only one minor distinction — adding a letter “a” and the gTLD “.com”.
When a domain name wholly incorporates a complainant’s registered mark, that is sufficient to establish identity or confusing similarity for purposes of the Policy. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525. Furthermore, adding the gTLD “.com” is of no legal significance from the standpoint of comparing the Domain Name to the Mark because the use of a gTLD is required of domain name registrants. See SBC Communications Inc. v. Fred Bell aka Bell Internet,WIPO Case No. D2001-0602. Similarly, UDRP panels have consistently held that “a mere addition of a minor misspelling or typographical error of a mark, does not create a new or different mark in which Respondent has legitimate rights”. See Hobson, Inc. v. Peter Carrington a/k/a Party Night Inc.,WIPO Case No. D2003-0317. Such an insignificant modification to a trademark is commonly referred to as “typosquatting” as such conduct seeks to wrongfully take advantage of errors by users in typing domain names into their web browser’s location bar. See Six Continents Hotels, Inc. v. null John Zuccarini d/b/a Country Walk,WIPO Case No. D2003-0161.
For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied. B. Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interests in the Domain Name. It is undisputed that Complainant has not licensed or otherwise permitted Respondent to use the VALERO Mark in any manner, including as a domain name. The record evidence indicates that Respondent registered the Domain Name just a few months ago, well after Complainant had registered rights in the Domain Name. Respondent has not provided any evidence establishing that it has been commonly known by the Domain Name. Furthermore, there is no evidence that Respondent is making a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the Domain Name insofar as Respondent is using the Domain Name in what appears to be a fraudulent scheme and it resolves to a parked page.
Complainant has raised a prima facie presumption of Respondent’s lack of rights or legitimate interests, and
Respondent has failed to rebut that presumption.
For the foregoing reasons, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered and Used in Bad Faith
The Panel concludes, on the evidence submitted by Complainant, that Respondent has registered and used the Domain Name in bad faith. Complainant’s long-standing and worldwide rights in the VALERO Mark is uncontroverted, as is the fact that Respondent registered the Domain Name long after Complainant established its rights in the Marks and was using them worldwide. Complainant has used the VALERO Mark continuously for over 30 years and has spent a considerable amount of money advertising, marketing, and promoting the Mark in the United States and throughout the world by way of various media. Respondent would have had to have known about Complainant and the VALERO Mark when registering the Domain Name because (1) of the Mark’s renown and long-standing use; (2) Respondent is using a slightly misspelled version of the Mark; and (3) Respondent is using the Mark in a fraudulent manner thereby referencing Complainant by name and its employees. On the uncontroverted evidence, the Panel finds that Respondent registered the Domain Name in bad faith.
With regard to bad faith use, not only has Respondent provided false contact information to the Registrar in an attempt to conceal his or her true identity, Respondent has also engaged in a fraudulent scheme demonstrating that the Domain Name has been used in bad faith. Respondent registered the Domain Name for purposes of: (1) defrauding others into possibly revealing business information to someone who isn’t who they say they are; (2) financial gain – contracting for the sale of goods; and (3) exposing Complainant to liability, for example, for executing contracts, without permission, in the name of Complainant for goods that it does not sell. Further evidence of bad faith use is that there is no evidence Respondent actually used or contemplated a good faith use of the Domain Name in conjunction with the associated website and the actual registrant of the Domain Name has taken active steps to conceal his or her true identity. See Salomon Smith Barney Inc. v. Salomon Internet Services,WIPO Case No. D2000-0668 (bad faith use found where respondent concealed its true identity, provided false contact details to the registrar and passively used the domain name).
For the foregoing reasons, the Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied. 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.
Harrie R. Samaras
Sole Panelist
Date: September 12, 2019
1 As it appears, the Respondent has fraudulently used the identity of one of Complainant’s employees when registering the Domain Name. The Panel has decided that no purpose can be served by including the named Respondent in this Decision, and has therefore redacted Respondent’s name from the caption and body of this decision. The Panel has, however, attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the Domain Name that includes the named Respondent, and has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding. However, the Panel has further directed the Center, pursuant to paragraph 4(j) of the Policy and paragraph 16(b) of the Rules, that Annex 1 to this Decision shall not be published due to exceptional circumstances. See Banco Bradesco S.A. v. FAST-12785241 Attn. B / Name Redacted,WIPO Case No. D2009-1788.
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