WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Valero Energy Corporation, Valero Marketing and Supply Company v. Transure Enterprise Ltd / Above.com Domain Privacy
Case No. D2011-0920
1. The Parties
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 Respondents are Transure Enterprise Ltd, of Tortola British Virgin Islands, Overseas Territory of United Kingdom of Great Britain and Northern Ireland; and Above.com Domain Privacy, of Beaumaris, Victoria, Australia.
2. The Domain Name and Registrar
The disputed domain name <cccvalero.com> is registered with Above.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 26, 2011. On May 27, 2011 and June 6, 2011, the Center transmitted by email to Above.com, Inc. a request for registrar verification in connection with the disputed domain name. On May 30, 2011 and June 7, 2011, Above.com, Inc. 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 Complainants on June 8, 2011 providing the registrant and contact information disclosed by Above.com, Inc., and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on June 8, 2011.
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(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceedings commenced on June 9, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 29, 2011. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on June 30, 2011.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on July 13, 2011. 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
The Complainants are part of one of the North America’s largest independent petroleum refiners and marketers group, supplying products from clean-burning gasoline to asphalt, from jet fuel to polymers for plastics.
The Complainants own numerous registrations for the VALERO trademark and have operated an Internet website under the domain name <valero.com> for many years.
Furthermore, the Complainants have spent millions of dollars advertising, marketing, and promoting the VALERO brand in the United States and in other countries.
The disputed domain name was registered in April 19, 2011.
The Panel accessed the disputed domain name on July 27, 2011, when it was connected to a parking page with several links to different types of businesses, including gas and fuel supplying services.
5. Parties’ Contentions
The Complainants make the following contentions:
(i) The domain name <cccvalero.com> is confusingly similar to the Complainants' trademark. The VALERO mark is fully comprised in the domain name. The addition of the generic combination of three sequential instances of the letter “c” and of the generic top level domain extension ".com" are not enough to distinguish the domain name from the trademark.
(ii) The Respondents have no rights or legitimate interests in or to the <cccvalero.com> domain name. The Respondents have never been commonly known by the disputed domain name; have not used or made demonstrable preparations to use the disputed domain name; and are not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain. The Complainants have not licensed to the Respondents the right to use the VALERO mark, and the Respondents are not otherwise authorized to act on Complainants' behalf. To the contrary, the Respondents have used the disputed domain name to operate a pay-per-click website which is intended to trade on the fame of the Complainants' mark. The Respondents’ type of conduct does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. Also, some of the sponsored links point to websites that offer information about computer hacking and other contents that tarnish the Complainants' brand and goodwill.
(iii) The Respondents have been subject of at least 65 WIPO domain name dispute proceedings and 47 such proceedings with the National Arbitration Forum. In each case, the panel has ordered the domain name(s) at issue to be transferred to the trademark owner. At the time the Respondents registered the disputed domain name the Complainants were listed as the 24th largest company in the United States according to Fortune magazine. The Respondents intentionally registered the disputed domain name, for commercial gain. The Complainants offer a consumer retail credit card that allows consumers to purchase gasoline and other goods and services which are advertised, marketed and promoted under the VALERO trademark. The website at which the Complainants’ customers may apply for the credit card and pay their bills is held at “https://ccc.valero.com/mycard/SignIn.aspx.” The Respondents’ use of the VALERO mark in the disputed domain name is intended to attract the Complainants’ customers for financial gain by creating a likelihood of confusion with the Complainants' trademark as to the source, sponsorship, affiliation or endorsement of the Respondents’ website and of the goods and services advertised thereon.
The Respondents did not reply to the Complainants’ contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant shall prove the following three elements:
(i) The 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 domain name; and
(iii) The domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Annexes 3 to 11 to the Complaint demonstrate registrations of the VALERO trademark in the United States.
The trademark VALERO is wholly encompassed within the disputed domain name.
The inclusion of the letters "ccc" before the Complainants' trademark is not enough to avoid the similarity, mainly considering the Complainants offer their credit card services at the website “https://ccc.valero.com/mycard/SignIn.aspx”, which is also preceded by the same letters.
As a result, the Panel finds the disputed domain name to be confusingly similar to the Complainants’ trademark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides some examples without limitation where a respondent can demonstrate a right or legitimate interest in a domain name by showing one of the following facts:
(i) Before receiving any notice of the dispute, the respondent used or made preparations to use the 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; or
(iii) The respondent is making a legitimate non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue.
Based on the Respondents’ default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondents have no rights or legitimate interests in the disputed domain name.
The Panel notes that the present record provides no evidence to demonstrate the Respondents intent to use or to make preparations to use the domain name in connection with a bona fide offering of goods or services. Indeed, the disputed domain name displays pay-per-click pages filled with links to competitors’ websites.
The Complainants have not licensed or authorized the usage of their trademark to the Respondents, and it does not appear from the present record that the Respondents are commonly known by the disputed domain name.
Consequently, the Panel is satisfied that the Complainants have proven the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) 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) The respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.
The Complainants' trademark was already known in the field of fuel supplying when the disputed domain name was registered.
The disputed domain name is being used as a pay-per-click landing page, displaying sponsored links for third party websites that offer competing services and products.
Therefore, in doing so, the Respondents:
(i) create a likelihood of confusion with the Complainants’ trademark;
(ii) obtain click-through revenue from this practice; and
(iii) deprive the Complainants from selling its products to prospective clients who are clearly looking for the Complainants and, at the same time, promote products offered by competitors.
In situations like this, previous UDRP decisions have considered this type of usage of a domain name enough to demonstrate bad faith. “It is now well-established that the use of a parking page in this manner is strong evidence of bad faith” (Serta Inc. v. Charles Dawson, WIPO Case No. D2008-1474). See also Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415.
The Respondents also present an undeniable pattern of conduct in the registration of domain names that reproduce third party's trademarks with bad faith, as characterized in several previous UDRP cases.
Accordingly, the Panel finds that the Complainants have proved that the disputed domain name was registered and is being used in bad faith, satisfying the third element of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <cccvalero.com> be transferred to the Complainants.
Dated: July 27, 2011