WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Valero Energy Corporation, Valero Marketing and Supply Company v. Domain Name Proxy, LLC, Navigation Catalyst Systems, Inc.
Case No. D2011-1227
1. The Parties
The Complainant is Valero Energy Corporation of Texas, United States of America (USA) and Valero Marketing and Supply Company of Texas, USA, represented by Adams and Reese LLP, USA.
The Respondent is Domain Name Proxy, LLC of Arizona, USA and Navigation Catalyst Systems, Inc. of California, USA.
2. The Domain Name and Registrar
The disputed domain name <valerocreditcards.com> (the “Domain Name”) is registered with Basic Fusion, Inc. (The Registrar).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 18, 2011. On July 19, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same date, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 25, 2011 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 July 25, 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 Respondent of the Complaint, and the proceedings commenced on July 26, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 15, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 17, 2011.
The Center appointed Michelle Brownlee as the sole panelist in this matter on September 2, 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 Complainant owns U.S. Trademark Reg. Nos. 1,314,004, 2,560,091, 2,656,971, and 3,108,715 for the trademark VALERO and U.S. Trademark Reg. Nos. 2,656,973, 2,927,757, 2,938,790, and 3,688,322 for the trademarks V VALERO and design and VALERO V and design. These registrations cover a variety of goods and services, including gasoline and diesel fuel, lubricant base oil, oil and gas exploration, production and distribution services, chemical processing services, retail store services, car wash services, and credit card services.
The Respondent registered the Domain Name on July 17, 2006.
5. Parties’ Contentions
The Complainant has continuously used the VALERO mark in commerce for at least thirty-one years. During this time, the Complainant has spent tens of millions of dollars advertising, marketing, and promoting the VALERO brand in the United States and throughout the world, in a wide variety of media formats, including print, television, radio, Internet, billboards, and signage, among others. As a result of the Complainant’s significant monetary investment and continuous use of the trademark to advertise, market and promote the VALERO brand over more than three decades, the VALERO trademark has developed extensive goodwill and favorable consumer recognition. The Complainant has continuously owned and operated an Internet website under the Domain Name <valero.com> for many years.
The Complainant contends that the Domain Name is confusingly similar to the Complainant’s VALERO trademark, that the Respondent has no rights to or legitimate interests in respect of the Domain Name, and that the Respondent registered and is using the Domain Name in bad faith. The Respondent has used the domain to operate a domain-parking website for profit which is intended to trade on the fame of the Complainant’s mark. At the time the Respondent registered the Domain Name on July 17, 2006, the Complainant was listed as the 15th largest company in the USA according to Fortune magazine, and the Respondent must have been aware of the Complainant’s rights in the VALERO mark. The Complainant offers 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. These customers are able to apply for the credit card and pay credit card bills online. The Respondent’s use of the VALERO mark in the Domain Name is intended to attract the Complainant’s customers and other Internet users to the Respondent’s website for financial gain by creating a likelihood of confusion with the Complainant’s VALERO trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website and the goods and services advertised thereon.
The Respondent did not reply to the Complainant’s 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 must prove the following three elements:
(1) the domain name at issue is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) the respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns rights in the VALERO trademark. There are many UDRP decisions that find that the pairing of a distinctive trademark with less distinctive terms is confusingly similar to the distinctive trademark. See, e.g., MasterCard International Incorporated v. Michael J Yanda, Indy Web Productions, WIPO Case No. D2007-1140; Parfums Christian Dior v. 1 Netpower, Inc., WIPO Case No. D2000-0022 (<christiandiorcosmetics.com> and <christiandiorfashions.com> confusingly similar to CHRISTIAN DIOR); Toyota Motor Sales USA v. Rafi Hamid dba ABC Automobile Buyer, WIPO Case No. D2001-0032 (<leasinglexus.com> and <lexuselite.com> confusingly similar to LEXUS). Accordingly, the Panel finds that the Domain Name, which pairs the VALERO trademark with the generic term “credit cards,” which is a service that the Complainant provides, is confusingly similar to the Complainant’s VALERO trademark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that a respondent can demonstrate rights to or legitimate interests in a domain name by demonstrating one of the following facts:
(i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name at issue 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 noncommercial or fair use of the domain name without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark at issue.
In this case, the Respondent has not presented evidence that the Respondent used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services, that the Respondent is commonly known by the Domain Name or that the Respondent is making a legitimate noncommercial or fair use of the Domain Name, or in any other way refuted the Complainant’s prima facie case. The Complainant has presented evidence, which was not refuted by the Respondent, that the Respondent is using the Domain Name to provide links to websites that offer credit card services in order to collect click-through referral fees. This activity cannot under the circumstances be considered a bona fide offering of goods or services. See, e.g., PRL USA Holdings, Inc. v. LucasCobb, WIPO Case No. D2006-0162. Accordingly, the Panel finds that the Respondent does not have any rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances are 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 at issue 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 Complainant has established bad faith under paragraph 4(b)(iv) of the Policy. The Respondent’s use of the Domain Name to earn referral fees by linking to other websites attracts Internet users to the Respondent’s web site by creating confusion as to source and results in commercial gain to the Respondent.
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 <valerocreditcards.com> be transferred to the Complainant.
Dated: September 9, 2011