The Complainants are Valero Energy Corporation and Valero Marketing and Supply Company of San Antonio, Texas, United States of America, represented by Adams and Reese LLP, United States of America.
The Respondent is Joanne Grace of Kennebunk, Maine, United States of America, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 5, 2013. On December 6, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 6, 2013 the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 18, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 7, 2014. The Response was filed with the Center on December 18, 2013. On December 20, 2013, the Complainant filed a “Reply to Respondent’s Response” with the Center. The Respondent filed an “additional” Response with the Center on January 7, 2014.
The Center appointed Dennis A. Foster as the sole panelist in this matter on January 17, 2014. 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.
The Panel takes notice that the Complainant filed an unsolicited additional Supplemental Filing (in the form of a “Reply to Respondent’s Response”), in delayed reaction to which the Respondent also filed a Supplemental Filing (in the form of an “additional” Response). The Policy does not require the Panel to consider Supplemental Filings from the parties, but the Panel, in its discretion per paragraph 10 of the Rules “[to] ensure that…each Party is given a fair opportunity to present its case”, may consider such Filings in rendering its decision. In this case, since the Supplemental Filings occurred within the time frame allotted for the initial Response, and were received by the Center prior to appointment of the Panel, the Panel shall consider in its ruling below all such Filings. 4. Factual Background
The Complainant operates in the United States of America and owns service mark registrations with the United States Patent and Trademark Office (“USPTO”) for the marks, VALERO (e.g., Registration No. 1,314,004; registered January 8, 1985) and VALERO ENERGY CORPORATION (e.g., Registration No. 1,202,362; registered July 20, 1982).
The Respondent, a United States citizen, owns the disputed domain name . The date of registration creation is January 12, 2013. The disputed domain name resolves to a website that contains links to the websites of some of the Complainant’s competitors. 5. Parties’ Contentions A. Complainant
- The Complainant owns USPTO service mark registrations for both VALERO and VALERO ENERGY CORPORATION. The Complainant has used both service marks in commerce for more than 30 years and has spent tens of millions of dollars on advertising and promotion of the marks. The Complainant has also owned and operated a website at the domain name, , since 1996.
- The disputed domain name, , is identical or confusingly similar to the Complainant’s marks. The name is essentially the same as the Complainant’s VALERO ENERGY CORPORATION service mark, as that name includes the most distinctive portion of the mark, i.e., VALERO ENERGY. Also, the addition of the generic Top Level Domain (“gTLD”), “.co”, is not relevant in the consideration of similarity.
- The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not commonly known by the disputed domain name; is neither using, nor has made preparations to use, the disputed domain name in a bona fide offering of goods and services; and is not using the disputed domain name for legitimate noncommercial or fair use purposes. Moreover, the Respondent is not licensed by the Complainant to use the disputed domain name or to act on behalf of the Complainant.
- The Respondent uses the disputed domain name for a parking page through which the Respondent draws profit. The Respondent’s website attached to the disputed domain name contains links to third party websites that offer products that are competitive with those sold by the Complainant under its service marks.
- The Complainant is listed as the twelfth largest company in the United States according to a prominent magazine published there, and the Respondent, in her own email assertion, demonstrated that she was well aware of the Complainant’s prominence when registering the disputed domain name. Despite an email exchange to the contrary, the Respondent continues to use the disputed domain name for a parking page containing links to the websites of Complainant’s competitors for her commercial gain. Such use is consistent only with bad faith registration and use of the disputed domain name.
- In November 2013, the Respondent offered to transfer the disputed domain name to the Complainant free of charge. The Complainant accepted the offer, but when attempting to consummate the transfer, it was unable to obtain the Respondent’s cooperation to do so. This deceptive behavior is further evidence of bad faith on the part of the Respondent.
- The Respondent registered the disputed domain name to prevent the Complainant from reflecting its marks in that name. That action constitutes bad faith registration and use of the disputed domain name under the Policy. B. Respondent
- The USPTO records the mark, VALERO ENERGY CORP., as “cancelled and deemed dead”.
- The Respondent has not used the disputed domain name to sell products pertaining to the Complainant. The name has not been offered for sale, and has not been used to divert traffic from the Complainant’s website for commercial gain or to tarnish the Complainant’s marks. The disputed domain name is held in the Respondent’s account.
- The Respondent offered to transfer the disputed domain name to the Complainant at no cost, but, due to various difficulties, could not conclude that transfer during the Christmas season. After that season, the Respondent was offended by the Complainant’s “strong arm” methods and withdrew the transfer offer.
- All of the Respondent’s domain names were to be transferred to her “SEDO” account. Domain names in that account that were not for sale, including the disputed domain name, were then to be removed from “SEDO” listing. Thus, the Respondent believed that the disputed domain name was unavailable as a parking page, and not at the disposal of the Registrar.
- The disputed domain name was erroneously used for advertising links, but the revenue must have gone to someone other than the Respondent, who did not receive any commercial gain.
- The Respondent did not register and is not using the disputed domain name in bad faith. The Respondent believed the Complainant’s service mark had been cancelled. The Respondent has not offered to sell the name to the Complainant. The Respondent is not a competitor of the Complainant, and the disputed domain name was not registered to disrupt the Complainant’s business. The name was not registered to prevent the Complainant from reflecting its mark in a corresponding name, and the Respondent has no pattern of engaging in such conduct. The Respondent did not intend to obtain commercial gain from Internet user confusion with respect to the disputed domain name and the Complainant’s service marks. C. Complainant’s Supplemental Submission
- The Respondent’s Response offers only conclusions that are unsupported by evidence. Respondent’s reference to a cancelled service mark registration is a diversion, as the Complainant has at least six valid and continuing USPTO service mark registrations that are relevant to this case. D. Respondent’s Supplemental Submission
- The Respondent did not register the disputed domain name to prevent the Complainant from registering the name. The Complainant had ample opportunity to register the disputed domain name as it had been available for registration since 2010.
- The Respondent has evidenced no pattern of conduct to support a finding of bad faith. The Respondent could have registered many other domain names that might include “ValeroEnergy” but did not.
- As evidence of the Respondent’s good faith, she sent an email letter to the Complainant recommending that it register many other domain names that corresponded to its marks and that ended in available gTLD’s, such as “.biz” and “.pro”. The Complainant apparently heeded the Respondent’s advice, and soon after registered and . However, the Complainant has failed to register many other domain names that are identical to its service marks, even though those initial registrations might cost as little as USD 20 apiece. This failure by the Complainant to act accordingly may lead members of the public to acquire such names, setting the stage for unnecessary legal challenges and costs. 6. Discussion and Findings
In accordance with paragraphs 4(a)(i) – (iii) of the Policy, the Panel shall find for the Complainant and order a transfer of the disputed domain name, , if the Complainant can demonstrate that:
- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has established its rights in the VALERO and VALERO ENERGY CORPORATION marks by supplying the Panel with pertinent evidence of the Complainant’s valid USPTO service mark registrations for both marks. The Panel notes that several previous UDRP panels have reached similar conclusions regarding the Complainant’s rights in the VALERO and related marks. See, for example, Valero Energy Corporation, Valero Marketing and Supply Company v. Bargin Register, Inc. - Client Services, URLBrokeringcom, and Telecom Tech Corp.,WIPO Case No. D2012-2399 (“The Complainant is the owner of the VALERO Mark. It owns trade mark registrations for the VALERO Mark in the United States.”); Valero Energy Corporation, Valero Marketing and Supply Company v. ICS INC. / Contact Privacy, Inc. Customer 0131720907,WIPO Case No. D2012-2398; and Valero Energy Corporation and Valero Marketing and Supply Company v. PrivacyP and Maying Joe,WIPO Case No. D2012-0939.
In the Panel’s view, the disputed domain name, , is certainly confusingly similar to the Complainant’s VALERO ENERGY CORPORATION mark. The only difference is the subtraction of the generic entity identifier, “corporation”, and the addition of an obligatory domain name suffix, “.co”. Those minor differences do not provide a substantial distinction between the name and the mark. Moreover, the Panel believes that the disputed domain name is also confusingly similar to the Complainant’s simplified VALERO mark, as the disputed domain name is dominated by that same non-generic term which appears as the name’s first term. Again, the addition of a generic and descriptive term, “energy”, and the aforementioned suffix do not sufficiently mitigate the confusing similarity between the disputed domain name and the mark. See, Valero Energy Corporation, Valero Marketing and Supply Company v. ICS INC. / Contact Privacy, Inc. Customer 0131720907, supra (finding to be confusingly similar to the VALERO mark); Valero Energy Corporation and Valero Marketing and Supply Company v. PrivacyP and Maying Joe, supra (finding to be confusingly similar to the VALERO mark, stating that “The addition of the words ‘gas station’ to ‘valero’ in the disputed domain name mitigates in favor of confusing similarity, particularly since such generic words directly point to the Complainant’s business.”); and Société Nationale des Chemins de Fer Français, SNCF v. Transure Enterprise Ltd / A Domain Privacy,WIPO Case No. D2011-0447 (“…the Panel does not consider, when analyzing the identity or similarity, the suffix, in this case “.com,” because it is a necessary component of the Domain Name and does not give any distinctiveness.”).
As a result, the Panel finds that the Complainant has succeeded in demonstrating that the disputed domain name is identical or confusingly similar to a service mark in which the Complainant has rights. B. Rights or Legitimate Interests
If the Complainant can make a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, then the Respondent must offset that case by presenting persuasive evidence that she does possess such rights or interest. See, Ustream.TV, Inc. v. Vertical Axis, Inc,WIPO Case No. D2008-0598 (“…it is the consensus view of WIPO UDRP panels that the threshold for the complainant to prove a lack of rights or legitimate interests is low, and that, once the complainant has made out a prima facie showing on this element, the burden of production shifts to the respondent.”); and Telex Communications, Inc. v. Jinzheng Net, NAF Claim No. 833071 (“Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy [paragraph] 4(a)(ii).”). Since the Complainant has established the confusing similarity between the disputed domain name and the Complainant’s marks, its clear assertion that it neither is affiliated with the Respondent, nor has granted the Respondent a license to use those marks, cements said prima facie case.
In rebuttal to the prima facie case, the Respondent contends that, due to her ignorance with respect to the effects of removal from a list of other domain names she owns, the disputed domain name was attached erroneously to a parking page that contains links to the websites of the Complainant’s competitors. The Respondent also alludes to the disputed domain name as being “held in my account”. However, nowhere in the Response does the Respondent explain her purpose in registering the disputed domain name or refer to any preparations to use the disputed domain name for any specific purpose. Accordingly, the Panel is motivated to rule that the Respondent cannot cite Policy paragraphs 4(c)(i) or (iii) in support of her claims to rights or legitimate interests in the disputed domain name. Moreover, the actual use to which the disputed domain name has been put, to resolve to a parked page that provides links to the websites of Complainant’s competitors, constitutes neither “a bona fide offering of goods or services” per paragraph 4(c)(i) nor “a legitimate noncommercial or fair use” of the disputed domain name per paragraph 4(c)(iii). See, VIVO S.A. and PORTELCOM PARTICIPAÇÕES S.A. v. Domains By Proxy - NA Proxy Account Niche Domain Proxy Manager,WIPO Case No. D2010-0925 (“The use of distinctive trademark terms to direct Internet users to a pay-per-click link farm parking page that offers goods or services competing with the trademark owner is well established under the Policy not to constitute a bona fide offering of goods or services or to constitute fair use.”); and Dwight Esnard v. Navigation Catalyst Systems, Inc., NAF Claim No. 1230381 (“Respondent’s [disputed] domain name resolves to a website displaying links to third-party websites in competition with Complainant. The Panel finds Respondent’s use of the disputed domain name is not a bona fide offering of goods or services pursuant to Policy [paragraph] 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy [paragraph] 4(c)(iii).”).
Finally, the Respondent has failed to furnish evidence that she, or a company that she owns, has been commonly known as the disputed domain name. Therefore, the Panel can not apply Policy paragraph 4(c)(ii) on the Respondent’s behalf. Consequently, due to the inadequacy of the Respondent’s rebuttal arguments, the Panel believes that the Complainant’s prima facie case remains controlling on this issue.
Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
As noted above, the Respondent has not rebutted successfully the Complainant’s contention that the disputed domain name has been used to host a website with links to the websites of competitors that offer goods and/or services that compete with the Complainant. Instead, the Respondent contends that such use resulted in error from third party action (including that of the Registrar) and that, in any event, she has not realized any commercial gain from the linkage use to which the disputed name has been put. Moreover, the Respondent argues that she did not register the disputed domain name in bad faith because, when she checked the USPTO registry, the service mark, VALERO ENERGY CORP., had been cancelled. Finally, in her Supplemental Submission, the Respondent asserts that the Complainant had plenty of opportunity to register the disputed domain name, but is habitually negligent in failing to register the various domain names that are identical to its service marks.
The Respondent’s contentions are not well received by the Panel.
The Respondent’s contention about the possible cancellation of a service mark that might relate to the disputed domain name fails to negate the ongoing valid status of other service marks held by the Complainant – namely, VALERO and VALERO ENERGY CORPORATION – which preserve the Complainant’s rights in marks to which the disputed domain name is confusingly similar. It would strain credulity for the Panel to believe that the Respondent, so well-informed about the supposedly “dead” service mark, was yet quite unaware of the “live” marks. Thus, the Panel concludes that the Respondent was very much aware of the Complainant’s service marks, and their implications, when she registered the disputed domain name.
Furthermore, the Respondent’s suggestion that third parties are to blame for the use to which the disputed domain is being put – i.e., to furnish links to the websites of the Complainant’s competitors – fails to absolve the Respondent from the ultimate responsibility with respect to such use. See, Rolex Watch U.S.A., Inc. v. Vadim Krivitsky,WIPO Case No. D2008-0396 ("Even if the advertising links served up to visitors on the website associated with the Domain Name are automated, the Respondent remains responsible for the uses to which the Domain Name is put.”); Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright,WIPO Case No. D2007-0267 (finding that the respondent’s actions constituted bad faith registration and use of the disputed domain name, while stating, “The Respondent contends that the advertisements in this case were ‘generated by the parking company’. The implication is that the Respondent was not responsible for the content of these advertisements. This may well be correct but in the Panel’s view this makes no difference.”); and Vance International, Inc. v. Jason Abend, NAF Claim No. 970871 (applying paragraph 4(b)(iv) to the case and opining, “Even if the license and authorization given to the domain parking services provider was actually communicated by a domain name broker, that broker would have been acting in an agency capacity on behalf of Respondent. Unless that broker acted beyond the agreed scope of authority, the broker’s actions and intentions are imputed to Respondent.”).
Also, whether or not the Respondent benefits financially from aforesaid use of the disputed domain name is not determinative. If someone gains commercially from linkages to the Complainant’s competitors’ websites because of Internet traffic drawn by the likely confusion between the disputed domain name and the Complainant’s marks, which the Panel believes to be the case, then that constitutes bad faith registration and use of the name by the Respondent pursuant to Policy paragraph 4(b)(iv). See, Villeroy & Boch AG v. Mario Pingerna,WIPO Case No. D2007-1912 (“…paragraph 4(b)(iv) requires the Respondent to intend to attract Internet users ‘for commercial gain’, but this gain does not need to be derived by the Respondent himself.”); Roust Trading Limited v. AMG LLC,WIPO Case No. D2007-1857; and Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, supra (“The requirements of paragraph 4(b)(iv) do not require the owner of the domain name to be the entity that commercially gains from the diversion.”).
Finally, the Respondent’s arguments that a finding of bad faith registration of the disputed domain name is unwarranted in this case because the Complainant had ample opportunity to register the name before the Respondent did so, and that the Complainant is at fault for failing to register that name as well as many other domain names that are identical to its service marks, are particularly without merit. The UDRP does not require trademark or service mark owners to register any specific domain names in order to protect or assert their rights with respect to their marks.
Consequently, the Panel finds that the Complainant has shown 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, , be transferred to the Complainant.
Dennis A. Foster
Sole Panelist
Date: February 12, 2014
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