Complainant is 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, Panama / Larry Welsh, 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 April 29, 2020. On May 1, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 1, 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 named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on May 4, 2020, 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 May 4, 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 Respondent of the Complaint, and the proceedings commenced on May 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 26, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 27, 2020. The Center appointed Nels T. Lippert as the sole panelist in this matter on June 2, 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 Valero Energy Corporation is a Delaware, United States corporation located in San Antonio, Texas. Valero Marketing and Supply Company is a wholly owned subsidiary of Valero Energy Corporation and is the owner of the United States trademark registrations at issue in this proceeding. Valero Energy Corporation and Valero Marketing and Supply Company are collectively “Complainant”. Complainant owns United States Trademark Registration Nos. 1,314,004 registered on January 8, 1985, 2,560,091, 2,656,971 and 3,108,715 for the VALERO trademark and United States Trademark Registration Nos. 2,656,973 registered on March 12, 2002, 2,927,757, 2,938,790, and 3,688,322 for VALERO V for various goods and services including oil and gas exploration, production processing and distribution services and convenience store services. Complaint, Annex 4. The disputed domain name Complainant owns and operates an Internet website under the domain name One of the uses of the disputed domain name is to resolve to a website and a related email address that attempts to persuade individuals that Complainant will place an order for personal protection equipment with the individual and directs the individual to send the ordered personal protection equipment to an address that does not belong to Complainant. 5. Parties’ Contentions A. Complainant Complainant contends that it has continuously used the VALERO trademark in commerce for at least 31 years, and during that time has spent tens of millions of dollars advertising, marketing and promoting the VALERO brand in the United States and throughout the world as a result of which the trademark has developed extensive goodwill and favorable consumer recognition. Furthermore, Complainant points to numerous prior UDRP decisions in which Panels have determined Complainant’s rights in the trademark and strength of the trademark. Complainant asserts that the disputed domain name is confusingly similar to Complainants trademark because it incorporates Complainant’s trademark and only adds the generic word “energy” plus the geographic designation “us” and generic Top-Level Domain (“gTLD”). Complainant further asserts that Respondent has no rights or legitimate interests in the disputed domain name because it has never been known by the disputed domain name and is not making a legitimate noncommercial or fair use of the disputed domain. Complainant notes that it has not licensed Respondent the right to use the VALERO trademark and has not otherwise authorized Respondent to act on Complainant’s behalf. Complainant contends that Respondent has registered and is using the disputed domain name in a criminal scheme to defraud third parties. Specifically, Complainant alleges Respondent uses an email address at the disputed domain name to impersonate one of Complainant’s employees and to persuade third parties to believe Complainant intends to purchase products that the third party is to ship to an address that is not associated with Complainant. In this regard, Complainant notes that Respondent has used the disputed domain name to resolve to Complainant’s home page in furtherance of creating a false association with Complainant. Complainant further asserts that Respondent has provided false contact information to the Registrar which constitutes bad faith. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A Panel should decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy and Rules and any rules and principles of law that it deems applicable. Paragraph 4(a) of the Policy directs that complainant must establish each of the following: (i) that the domain name registered to respondent is identical or confusingly similar to a trademark or service mark in which complainant has rights; and (ii) that respondent has no rights or legitimat4e interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar In this case the disputed domain name incorporates Complainant’s VALERO trademark in its entirety plus the descriptive term “energy” and the geographical designation “us”. As noted in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), where the relevant trademark is recognizable within the disputed domain name, the addition of other descriptive and geographic terms would not prevent a finding of a confusing similarity under the first element. Furthermore, the addition of the applicable Top-Level Domain is viewed as a standard registration requirement and, as such, is disregarded under the first element confusing similarity test. WIPO Overview 3.0, section 1.11. Here, the addition of the descriptive term “energy” (which also is part of Complainant’s corporate name) and the geographical designation “us” do not operate to prevent a finding of confusing similarity as the key element, VALERO, is reproduced in the disputed domain name. The Panel finds the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests Complainant asserts that Respondent has no bona fide rights in the disputed domain name because it is not commonly known by the disputed domain name; and it is not making a legitimate, noncommercial, or fair use of the disputed domain name without intent for commercial gain. Respondent has not disputed these assertions. Where, as here, the use of the disputed domain name is for illegal activity, it can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1. Furthermore, in circumstances such as this, where Respondent has failed to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name, Complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. The Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith In this case Complainant has submitted compelling evidence that the disputed domain name was registered and used in bad faith. Specifically, Complainant has established that Respondent registered and was using, at the time of the Complaint, the disputed domain name to engage in an illegal scheme to attract and defraud unsuspecting individuals. The disputed domain name was registered by Respondent many years after Complainant’s VALERO mark was registered in the United States. Because Respondent’s use of the disputed domain name is in furtherance of an illegal scheme it illustrates that Respondent knew of Complainant at the time of registration and had a bad faith intent to use the disputed domain name for purposes of soliciting products through illegitimate means. Konecranes, Inc. v. James White,WIPO Case No. D2018-0861. As noted in WIPO Overview 3.0, section 3.1.4, because use of a domain name for per se illegitimate activity can never confer rights or legitimate interests on a respondent, such behavior is manifestly considered evidence of bad faith. Therefore, the Panel finds that the disputed domain name was registered and is being used 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, Nels T. Lippert
Sole Panelist
Date: June 16, 2020
Full & Egal Universal Law Academy