The Complainants are Valero Energy Corporation and Valero Marketing and Supply Company, United States of America (“United States” or “U.S.”), represented by Fasthoff Law Firm PLLC, United States.
The Respondent is Registration Private, Domains By Proxy LLC, United States / Rene Rozados, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 7, 2020. On January 7, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 8, 2020, 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 the Complainants on January 8, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Center received an email communication from the Respondent on January 8, 2020. Pursuant to paragraph 4(d) of the Rules, the Center informed the Complainants of a deficiency with the Complaint on January 9, 2020. The Complainants filed an amended Complaint on January 14, 2020. 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 the Respondent of the Complaint, and the proceedings commenced on January 15, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 4, 2020. The Respondent did not submit a formal Response. Pursuant to paragraph 6 of the Rules, the Center notified the Parties on February 5, 2020, that it would proceed with panel appointment. The Center appointed Stefan Naumann as the sole panelist in this matter on February 12, 2020. 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 Valero Energy Corporation is a U.S. oil refiner and Fortune 500 company. The evidence shows that the Complainants own and use numerous U.S. VALERO word and word and device marks, the oldest of which is the U.S. word trademark VALERO number 1,314,004, registered on January 8, 1985, for oil and gas exploration, production, processing and distribution services in class 42. The Complainants operate a website at “www.valero.com”. They have filed 51 UDRP complaints since 2001. The Respondent is a U.S. resident who registered and/or owns the disputed domain name and was identified in the present UDRP proceeding as the underlying registrant by the Registrar. The disputed domain name In keeping with the consensus view among UDRP panels that a panel may undertake limited factual research into matters of public record if it deems this necessary to reach the right decision1, the Panel verified the use of the disputed domain name. The Google search results for the disputed domain name The Complainants assert that their VALERO marks are well-known, that the Respondent has no permission from the Complainants to use the Complainants’ trademarks or apply for a domain name with the Complainants’ trademarks, that the Respondent obviously knew of the Complainants’ trademarks and “is engaged in an elaborate, criminal scheme to commit wire fraud” by offering to ship a large quantity of oil from Venezuela using the name “Valero Group Corp.” and an email address “[...]@valerogroup.com”, and that its use of privacy services to hide its identity are evidence of bad faith registration and use. B. Respondent The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings In order to succeed in their claim, the Complainants must demonstrate that all three elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain name must be identical or confusingly similar to a trademark or service mark in which the Complainants have rights; (ii) the Respondent must have no rights or legitimate interests with respect to the disputed domain name; and (iii) the disputed domain name must have been registered and used in bad faith. A. Identical or Confusingly Similar The disputed domain name combines the term “Valero” with the dictionary term “group” and the generic Top-Level Domain (“gTLD”) “.com”. The addition of the dictionary term “group” and the gTLD does not affect the fact that the disputed domain name reproduces the Complainants’ VALERO marks. The disputed domain name is confusingly similar to the Complainants’ trademarks since the VALERO mark is clearly recognizable in the disputed domain name. The Panel is satisfied that the disputed domain name is confusingly similar to the Complainants’ trademarks for the purposes of the Policy. B. Rights or Legitimate Interests One would expect a legitimate business to provide information that allows it to be contacted. Here, however, the Respondent has attempted to hide its identity by subscribing to a privacy protection service. The privacy protection service thus formally appears as the registrant in the publicly available WhoIs. The nature of the disputed domain name carries a risk of implied affiliation since consumers may expect to land on a website of the Complainants when typing in the Complainants’ trademark VALERO and the term “group”, notably since the Complainants are part of a group of companies and also use the term “Valero” in their domain name. In addition, the Respondent’s parking page website at the disputed domain name makes clear that the domain name owner is not offering any services or products. The Respondent has chosen not to reply to the Complaint. The Panel finds that the Complainants have made a prima facie case that the Respondent lack rights or legitimate interests, and finds no indication in the evidence that the Respondent claim or could claim rights or legitimate interests of its own in the term “Valero”. Since the Respondent has no permission from the Complainants, its use of the disputed domain name is without rights or legitimate interests. The Panel considers that in the present case the Respondent does not have any rights or legitimate interests with respect to the disputed domain name. C. Registered and Used in Bad Faith The Complainants argue that the Respondent is engaged in criminal conduct involving the use of the disputed domain name as part of an email address “[...]@valerogroup.com”. The evidence provided by the Complainants in support of this assertion does not however show an email exchange with this email address. While the Panel observes a potential connection between the assertion of an unlawful offer to ship oil from Venezuela allegedly made by the Respondent and the LinkedIn information with the Respondent’s name, the terms “Valero group corp”, and an address in Venezuela, it declines to draw any conclusion on this basis and finds that the evidence is not sufficient to support a finding of criminal activity in this regard. However, the Respondent uses a parking webpage and a privacy protection service for the disputed domain name In certain circumstances, passive holding can be sufficient to find bad faith use. As discussed in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, the relevant issue is whether under the circumstances of the case, it can be held that a respondent is acting in bad faith. In Telstra Corporation Limited v. Nuclear Marshmallows, supra, the panel noted that: “ […] paragraph 4(b) recognizes that inaction (e.g. passive holding) in relation to a domain name registration can, in certain circumstances, constitute a domain name being used in bad faith. Furthermore, it must be recalled that the circumstances identified in paragraph 4(b) are “without limitation” – that is, paragraph 4(b) expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”. “The question that then arises is what circumstances of inaction (passive holding) other than those identified in paragraphs 4(b)(i), (ii) and (iii) can constitute a domain name being used in bad faith? This question cannot be answered in the abstract; the question can only be answered in respect of the particular facts of a specific case. That is to say, in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the Administrative Panel must give close attention to all the circumstances of the Respondent’s behavior. A remedy can be obtained under the Uniform Policy only if those circumstances show that the Respondent’s passive holding amounts to acting in bad faith”. In the present matter, the record shows that: (i) the Complainants’ trademarks are widely known in the U.S., as evidenced by their very substantial use in the U.S., which the Respondent indicated as its country of residence in the disputed domain name registration, and (ii) the Respondent hid its identity using a privacy protection service. In light of these specific circumstances, the Panel concludes that the Respondent’s passive holding of the disputed domain name 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 Stefan Naumann 1 Sermo, Inc. v. CatalystMD, LLC,WIPO Case No. D2008-0647; e-Duction, Inc. v. John Zuccarini, d/b/a The Cupcake Party & Cupcake Movies,WIPO Case No. D2000-1369; see also Descente, Ltd. and Arena Distribution, S.A. v. Portsnportals Enterprises Limited,WIPO Case No. D2008-1768; Latchways PLC v. Martin Peoples,WIPO Case No. D2010-1255; Sensis Pty Ltd. Telstra Corporation Limited v. Yellow Page Marketing B.V.,WIPO Case No. D2011-0057.
Sole Panelist
Date: February 20, 2020
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