Complainants are Valero Energy Corporation, United States of America (the “United States” or “U.S.”) and Valero Marketing and Supply Company, United States, represented by Fasthoff Law Firm PLLC, United States.
Respondent is WhosiGuard Protected, Panama / Froedtert Health, 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 October 20, 2020. On October 21, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 21, 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 Complainants on November 4, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainants to submit an amendment to the Complaint. Complainants filed an amended Complaint on November 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 November 5, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 25, 2020. The Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 27, 2020. The Center appointed Jeffrey M. Samuels as the sole panelist in this matter on December 16, 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 Complainants are Valero Energy Corporation and Valero Marketing and Supply Company, a wholly owned subsidiary of Valero Energy Corporation. Complainants own a number of United States trademark registrations for the VALERO trademark, as used as early as February 1983, in connection with oil and gas exploration, production, processing, and distribution services. See U.S. Trademark Registration No. 1,314,004 (registered January 8, 1985). Complainant Valero Energy Corporation also owns the domain name Complainant Valero Energy Corporation has continuously used the VALERO mark in commerce for at least 31 years and has spent tens of millions of dollars advertising, marketing, and promoting the VALERO mark in the U.S. and throughout the world. The disputed domain name, Complainants allege that the disputed domain name is confusingly similar to their VALERO marks. They point out that the disputed domain name is comprised of the VALERO mark in its entirety, adding only the generic terms “energy” and “group”, along with the generic Top-Level Domain (“gTLD”) extension, “.com.” Complainants further assert that Respondent has no rights or legitimate interests in the disputed domain name. Complainants contend that Respondent has never been commonly known by the disputed domain name, has not used or made demonstrable preparations to use the disputed domain name, and is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain. Complainants indicate that they have not licensed to Respondent the right to use the VALERO mark and that Respondent is not otherwise authorized to act on Complainants’ behalf. Complainants accuse Respondent of engaging in an elaborate criminal scheme to commit fraud. In support of such contention, Complainants attached to the Complaint, as Annex 5, an email exchange in which Respondent uses the email address “[…]@valeroenergygroup.com” to impersonate a purported employee of Complainant Valero Energy Corporation in an attempt to persuade a third party that Complainant Valero Energy Corporation is going to place an order for computer equipment with the third party. Respondent then, allegedly, directs the third party to send the computer equipment to Respondent. With respect to the issue of “bad faith” registration and use, Complainants maintain Respondent must have been aware of Complainants at the time the disputed domain name was registered but, nevertheless, intentionally registered, for commercial gain, a domain name comprised of the VALERO mark. Complainants also rely on Respondent’s non-use of the disputed domain name, its alleged criminal activity, and its providing of false contact information to the Registrar to support their allegation of bad faith registration and use. B. Respondent Respondent did not reply to Complainants’ contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Panel concludes that the disputed domain name, The Panel further determines that, in view of their longstanding use of, and registrations covering, the VALERO mark, Complainants have rights in such mark. See WIPO Overview 3.0, section 1.2, and cases cited therein. B. Rights or Legitimate Interests The Panel finds that Complainants have met their burden of establishing that Respondent has no rights or legitimate interests in the disputed domain name. The evidence indicates that the disputed domain name resolves to a dead landing page and there is no evidence that Respondent is commonly known by the disputed domain name. Under such set of facts, none of circumstances set forth in paragraph 4(c) of the Policy is applicable. Moreover, the use of a domain name for illegal activity (as described above) can never confer rights or legitimate interests on a respondent. See WIPO Overview 3.0, section 2.13.1, and cases cited therein. C. Registered and Used in Bad Faith The Panel finds that the disputed domain name was registered and is being used in bad faith. The evidence indicates that Respondent is not using the disputed domain name. Such passive use may support, and in this case does support, a finding of the requisite bad faith. See WIPO Overview 3.0, section 3.3, and cases cited therein. In addition to Respondent’s non-use of the disputed domain name, Complainants allege, and there is no evidence to the contrary, that Respondent attempted to conceal his or her true identity at the time of registering the disputed domain name. The Panel further notes that the VALERO mark has been in use for over 30 years and that, as a result, it may be presumed that Respondent was aware of Complainants and of the VALERO mark at the time the disputed domain name was registered. There is also evidence that Respondent impersonated an employee of Complainant Valero Energy Corporation in an attempt to take possession of certain computer equipment. 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 Jeffrey M. Samuels
Sole Panelist
Date: December 30, 2020
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