The Complainants are Valero Energy Corporation, United States of America (the “United States”) and Valero Marketing and Supply Company, United States, represented by Fasthoff Law Firm PLLC, United States.
The Respondent is Contact Privacy Inc. Customer 1246261745, Canada / David M Van Kilsdonk, 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 19, 2020. On January 20, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 20, 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 Complainant on January 22, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 22, 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 24, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 13, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 14, 2020. The Center appointed Evan D. Brown as the sole panelist in this matter on February 26, 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 is a company in the energy industry has used the mark VALERO for more than three decades. It owns a number of registrations for the mark, including United States Registrations Nos. 1,314,004, 2,560,091, 2,656,971, and 3,108,715. The Respondent registered the disputed domain name on January 14, 2020. According to the Complainant, the Respondent has used the disputed domain name to impersonate an employee of the Complainant by sending emails purporting to be from an employee of the Complainant, to one or more vendors of the Complainant, attempting to fraudulently procure the wiring of money. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s trademark; that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. See, Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen,WIPO Case No. D2014-0657. The Complainant has demonstrated its rights because it has shown ownership and other rights in the registered VALERO marks as noted above. The disputed domain name does not incorporate the Complainants’ exact mark, VALERO, but does resemble the Complainant’s mark. The Respondent used the disputed domain name specifically to confuse email users by sending email messages apparently while impersonating the Complainant. This evidence of intent to confuse on the part of the Respondent reinforces the conclusion that the disputed domain name is confusingly similar to the Complainant’s trademark. Lennar Pacific Properties Management, Inc. and CalAtlantic Title, Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Erik Landry,WIPO Case No. D2019-3054; Bayer Healthcare LLC v. Admin, Domain,WIPO Case No. D2016-2342. See also section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). In view of the above and the broader case context, this Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. The Complainant has established this first element under the Policy. B. Rights or Legitimate Interests The Complainant has successfully established a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name. The use of the disputed domain name to fraudulently – and perhaps criminally – impersonate the Complainant is a clear example of a respondent lacking rights or legitimate interests. See, e.g., NCI Group, Inc. v. Abel Saldivarmaldonado NA,WIPO Case No. D2019-0037; Advance Magazine Publishers Inc. v. Registration Private, Domains By Proxy LLC / Phillip Watson,WIPO Case No. D2016-1582. C. Registered and Used in Bad Faith The Policy requires a complainant to establish the disputed domain name was registered and is being used in bad faith. The facts of this case demonstrate that the Respondent registered the disputed domain name for commercial gain, and to trade on the Complainant’s goodwill and reputation. By impersonating an employee of the Complainant, the Respondent’s actions may have violated criminal law. For these reasons, the Panel finds that the disputed domain name was registered and is being use 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 Evan D. Brown
Sole Panelist
Date: March 11, 2020
Full & Egal Universal Law Academy