The Complainants are Valero Energy Corporation and Valero Marketing and Supply Company, United States of America (“United States”), (the “Complainant”), represented by Fasthoff Law Firm PLLC, United States.
The Respondent is WhoisSecure, United States / Forku Angelbert, Nigeria.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 13, 2021. On September 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 16, 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 September 24, 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 September 29, 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 September 30, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 20, 2021. The Respondent sent blank email communications on September 24, September 30, October 25, and November 19, 2021. The Center sent the Commencement of Panel Appointment Process on October 25.
The Center appointed Mario Soerensen Garcia as the sole panelist in this matter on November 10, 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, established in Texas, United States of America, and Valero Marketing and Supply Company, its subsidiary, and has continuously used the VALERO trademarks in commerce for at least 31 years, which have developed extensive goodwill and recognition among consumers.
The Complainant owns several registrations for VALERO marks, including the following:
- registration No. 1.314.004 for VALERO, granted on January 8, 1985;
- registration No. 2.560.091 for VALERO, granted on April 9, 2002;
- registration No. 2.656.973 for V VALERO, granted on December 3, 2002;
- registration No. 3.688.322 for V VALERO, granted on September 29, 2009.
The Complainant has continuously owned and operated a website under the domain name
The disputed domain name
The Complainant argues that the Respondent registered the disputed domain name, which is confusingly similar to its trademarks, as it comprises the trademark VALERO in its entirety, in addition to the geographical designation “uk”, which refers to “United Kingdom”.
The Complainant alleges that the Respondent has no license or authorization from the Complainant and also no relationship at all with the Complainant. Furthermore, the Complainant says that the Respondent is not commonly known by the disputed domain name and that the disputed domain name was registered without any rights or legitimate interests.
In addition, the Complainant argues that the Respondent was clearly aware of the Complainant’s fame, since at the time of the disputed domain name registration, the Complainant was listed as the 32th largest company in the United States, as per Fortune magazine.
According to the Complaint, the Respondent was fraudulently and intentionally attracting Internet users to its website, seeking to capitalize on the fame of the Complainant’s mark for commercial gain and creating a likelihood of confusion with the Complainant with a job offer scam.
The Complainant also informs that the Respondent provided false contact information to the Registrar when registering the disputed domain name.
Finally, the Complainant requests the transfer of the disputed domain name.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsAs per paragraph 4(a) of the Policy, the Complainant must prove that:
(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 SimilarThe evidence presented to the Panel demonstrates that the Complainant is the owner of several trademark registrations for VALERO in the United States.
The Complainant’s trademarks predate the registration of the disputed domain name.
The disputed domain name incorporates the Complainant’s trademark VALERO in its entirety and the letters “uk”, referring to “United Kingdom”. The addition of “uk” does not avoid confusing similarity between the disputed domain name and the Complainant’s trademarks.
As numerous prior UDRP panels have recognized, the incorporation of a trademark in its entirety or a dominant feature of a trademark is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s mark. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) and also that a domain name is identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,
WIPO Case No. D2000-0662).
In addition, it is the general view among UDRP panels that the addition of merely dictionary, descriptive or geographical words to a trademark in a domain name normally would not prevent a finding of confusing similarity under the first element of the UDRP (for example, Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd,
WIPO Case No. D2001-0110). See WIPO Overview 3.0, section 1.8.
The Panel finds that paragraph 4(a)(i) of the Policy has been proved by the Complainant, i.e., the disputed domain name is confusingly similar to the Complainant’s trademarks.
B. Rights or Legitimate InterestsThe Respondent has not submitted a response to the Complaint.
There is no evidence that the Respondent has any authorization to use the Complainant’s trademark or to register domain names containing the trademark VALERO.
There is no evidence that the Respondent is commonly known by the disputed domain name.
There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name or that before any notice of the dispute the Respondent has made use of, or demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. Instead, the Complainant showed evidence that the disputed domain name was used to mislead users by sending fraudulent emails.
The Panel finds that the use of the disputed domain name, which incorporates the Complainant’s trademark, does not correspond to a bona fide use, or demonstrable preparations to a bona fide use of the disputed domain name under the Policy.
For the above reasons, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied, i.e., the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad FaithThe Complaint showed evidence that the trademark VALERO is registered by the Complainant in the United States, and has been used for at least 31 years. Also, the Complainant owns and uses the domain name
The Respondent has no rights or legitimate interests in the disputed domain name and the Complainant’s VALERO mark is well recognized in its business segments. Thus, a domain name that comprises such mark may already be suggestive of the respondent’s bad faith.
There is evidence in the Complaint that the disputed domain name was used with the intent to deceive Internet users to believe they were negotiating with the Complainant, such as the redirection of the disputed domain name to the Complainant’s website, as well as the use of email addresses to simulate job offers on behalf of the Complainant. In other words, the Respondent was engaged in fraudulent activities for commercial gain.
In addition to the above, the Complainant demonstrated that the disputed domain name was registered by the Respondent using false contact information.
Therefore, this Panel finds that the Respondent has intentionally attempted to cause confusion with the Complainant’s trademark by misleading Internet users to believe that its website belongs to or is associated with the Complainant. Moreover, the Respondent has chosen not to respond to the Complainant’s allegations.
This Panel finds that the Respondent’s attempt of taking undue advantage of the Complainant’s trademarks as described in paragraph 4(b)(iv) of the Policy and the fraudulent email activity have been demonstrated.
For the above reasons, the Panel finds that the condition of paragraph 4(a)(iii) of the Policy has been satisfied, i.e., the disputed domain name has been registered and is being used in bad faith.
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
Mario Soerensen Garcia
Sole Panelist
Date: November 23, 2021