The Complainants are Valero Energy Corporation, United States of America (the “United States” or the “U.S.”), Valero Marketing and Supply Company, United States, represented by Fasthoff Law Firm PLLC, United States.
The Respondent is DomainPeople Inc., Canada / Omni Corp, United States.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 6, 2021. On August 10, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 11, 2021, 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 August 18, 2021, 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 August 19, 2021.
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 August 24, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 13, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 24, 2021. On September 24, 2021, the Center received an email communication connected to the Domain Name via the email address “[…]@valero-oilandgas.com”.
The Center appointed William R. Towns as the sole panelist in this matter on September 30, 2021. 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 BackgroundThe Complainants are Valero Energy Corporation, headquartered in San Antonio, Texas, United States, and Valero Marketing and Supply Company, a wholly owned subsidiary of Valero Energy Corporation (hereinafter referred to collectively either as the “Complainant” or “Valero”). The Complainant’s business activities focus primarily but not exclusively on oil and gas exploration, production, procession, and distribution. The Complainant is the owner of following trademark registrations for its VALERO mark issued by the United States Patent & Trademark Organization (USPTO):
- VALERO, U.S. Reg. No. 1314004, applied for August 1, 1983, and registered on January 8, 1985, for use in oil and gas exploration, production, processing, and distribution services in Class 42 (first use in commerce February 7,1983) (Sec. 2(f));
- VALERO, U.S. Reg. No. 4216650, applied for October 5, 2011, and registered on October 2, 2012, for credit card services in Class 36 (first use in commerce December 6, 2002) (Sec. 2(f));
- VALERO,U.S. Reg. No. 2560.091, applied for May 8, 2000, and registered on April 9, 2002, for retail store services in Class 35 (first use in commerce June 15, 2000) (Sec. 2(f));
- VALERO, U.S. Reg. No. 2656971, applied for June 2, 2000, and registered on December 3, 2002, for convenience store services in Class 35, automobile service station and car wash services in Class 37 (first use in commerce August 15, 2000);
- VALERO (and design), U.S. Reg. No.2656973, applied for June 7, 2000, and registered on December 3, 2002, for convenience store services and Automobile service station and car wash services in Classes 35 and 37 (first use in commerce August 15, 2000);
- VALERO (and design), U.S. Reg. No. 3688322, applied for August 25, 2008, and registered on September 29, 2009, for chemical process services in Class 40 (first use in commerce September 1, 2005);
- VALERO (and design), U.S. Reg. No. 2938790, applied for October 31, 2002, and registered on April 5, 2005, for credit card services in Class 36 (first use in commerce December 6, 2002); and
- VALERO (and design), U.S. Reg. No. 2927757, applied for March 14, 2003, and registered on February 22, 2005, for gasoline, diesel fuel and lubricant oils in Class 4 (first use in commerce August 15, 2000).
The Complainant when registering the VALERO marks acknowledged that “the word ‘Valero’ reflects the original name of the Alamo, which was ‘the mission of San Antonio de Valero’”. As previously noted, the Complainant is headquartered in San Antonio, Texas.
The Respondent registered the disputed domain name
The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s VALERO mark in its entirety, notwithstanding the inclusion of the generic phrase “oil and gas” together with the generic Top-Level Domain extension “.com”. The Complainant explains that when analyzing identity or confusing similarity the “.com” extension is not considered because while a necessary component of the disputed domain name it does not communicate distinctiveness. The Complainant maintains that the VALERO mark is clearly recognizable in the disputed domain name, and further observes that the insertion of a hyphen (“-”) between “valero” and the words “oilandgas” (“oil and gas”) does not prevent a finding of confusing similarity. The Complainant thus concludes that the disputed domain name is confusingly similar to the Complainant’s mark under the Policy.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. According to the Complainant, the Respondent has not been licensed, authorized or otherwise given permission to use or register the VALERO mark, has not been commonly known by the disputed domain name, and has neither used nor made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
The Complainant maintains that the Respondent has engaged in an elaborate criminal scheme utilizing a Nigerian/419 advanced fee scam, attempting to collect personal identifying information and to defraud victims in a job offer scam. According to the Complainant, the Respondent posed as a resources manager for “Valero Oil & Gas Ltd.” in an attempt to defraud the intended victim, who contacted the Complainant, alerting the Complainant of the Respondent’s attempted fraud. The Complainant submits that the conduct described above cannot constitute a bona fide offering of goods or services under the Policy, and further emphasizes that the Respondent has made no legitimate noncommercial or other fair use of the disputed domain name.
The Complainant concludes that the Respondent registered and is using the disputed domain name in bad faith. The Complainant emphasizes that the Respondent had the Complainant’s VALERO mark firmly in mind when registering the disputed domain name. Given that the Complainant’s VALERO mark had been registered and in use for well over 30 years when the Respondent registered the disputed domain name, the Complainant concludes that the Respondent intentionally targeted the Complainant’s mark, providing false contact information to the registrar, and using the disputed domain name in furtherance of an elaborate criminal scheme utilizing a Nigerian/419 advanced fee scam, seeking to collect personal identifying information by means of a fraudulent scam.
B. RespondentThe Respondent did not reply to the Complainant’s contentions. On September 24, 2021, the Center received an email communication from the email connected to the fraudulent scheme being conducted through the disputed domain name. The email stated,
“Job applicant,
We got these details earlier, kindly be patient we shall get back to you.”
No further communications have been received.
6. Discussion and Findings A. Scope of the PolicyThe Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the view is that the burden of production shifts to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270.
B. Identical or Confusingly SimilarThe Panel finds that the disputed domain name is confusingly similar to the Complainant’s VALERO mark, in which the Complainant has established rights through registration and use. In considering identity and confusing similarity, the first element of the Policy serves essentially as a standing requirement.1 The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the Complainant’s trademark and the disputed domain name.
The Complainant’s VALERO mark is clearly recognizable in the disputed domain name.2 The inclusion in the disputed domain name of a hyphen (“-”) inserted between “valero” and “oilandgas” (i.e., “oil and gas”) does not prevent a finding of confusing similarity. When at least a dominant feature of the relevant trademark is recognizable in the disputed domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.3 See Autodesk, Inc. v. Brian Byrne, meshIP, LLC,WIPO Case No. D2017-0191. See also National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin’ Connection, Inc.,WIPO Case No. D2007-1524.
Top-Level Domains (“TLDs”) generally are disregarded when evaluating the identity or confusing similarity of the Complainant’s mark to the disputed domain name under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the TLD.4
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate InterestsAs noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainant’s VALERO mark. The record nonetheless clearly reflects the Respondent’s registration and use of the disputed domain name in furtherance of an attempted fraudulent employment-related identify and theft scam.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not submitted a response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. The Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.
It is evident from the record that the Respondent was aware of the Complainant and had the Complainant’s VALERO mark in mind when registering the disputed domain name. The record establishes beyond any doubt that the Respondent registered the disputed domain name with the aim of exploiting and profiting from the Complainant’s mark, using the disputed domain name to impersonate the Complainant in a fraudulent employment-related and identity theft scheme. The Panel notes that the use of a domain name for illegal activity (e.g., phishing, impersonation, or other types of fraud) can never confer rights or legitimate interests on a respondent. See WIPO Overview 3.0, section 2.13, and cases cited therein.
Having regard to all of the relevant circumstances in this case, and in the absence of any explanation by the Respondent, the Panel concludes that the Respondent has neither used nor demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services, and that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. There is no indication that the Respondent at any time has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. There is nothing in the record before the Panel that could support a finding of the Respondent’s rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad FaithParagraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The Panel concludes that the Respondent had the Complainant’s VALERO mark firmly in mind when registering the disputed domain name. The Respondent’s registration and use of the disputed domain name as reflected in the record of this case is clearly demonstrative of bad faith. The Respondent sought to capitalize on the Complainant’s trademark rights, creating a likelihood of confusion with the Complainant’s VALERO mark, with the Respondent’s ultimate objective to profit illicitly from the impersonation of the Complainant in an employee-theft scam.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
7. DecisionFor 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
William R. Towns
Sole Panelist
Date: October 14, 2021
1 See WIPO Overview 3.0, section 1.7.
2 Id.
3 See WIPO Overview 3.0, section 1.8, and cases cited therein. When the relevant trademark is recognizable in the disputed domain name the addition of other terms, whether descriptive, geographical, pejorative, meaningless, or otherwise, does not prevent a finding of confusing similarity under paragraph 4(a)(i) of the Policy.
4 See WIPO Overview 3.0, section 1.11.2 and cases cited therein.