World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Valero Energy Corporation and Valero Marketing and Supply Company v. Above.com Domain Privacy / Host Master, Transure Enterprise Ltd

Case No. D2011-1740

1. The Parties

The Complainant is Valero Energy Corporation and Valero Marketing and Supply Company of Texas, United States of America, represented by Adams and Reese LLP, United States of America (the “U.S.” or the “United States”).

The Respondent is Above.com Domain Privacy of Victoria, Australia / Host Master, Transure Enterprise Ltd of British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <myvalerocard.com> is registered with Above.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 13, 2011. On October 14, 2011, the Center transmitted by email to Above.com, Inc. a request for registrar verification in connection with the disputed domain name. On October 17, 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 Complainant on October 26, 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 October 29, 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 November 3, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 23, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 2, 2011.

The Center appointed Cherise M. Valles as the sole panelist in this matter on December 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 is a company based in the United States. It is a petroleum refiner and marketer that has used the VALERO mark in commerce for more than 30 years. At the time of the Respondent’s registration of the disputed domain name <myvalerocard.com>, the Complainant was listed as the 24th largest company in the United States according to Fortune magazine.

It is the owner of the following trademarks, among others:

U.S. trademark registrations No. 1,314,004, No. 2,560,091, No. 2,656,971, and No. 3,108,715 for the VALERO trademark; U.S. trademark registration No. 1,202, 362 for the VALERO ENERGY CORPORATION mark;

U.S. trademark registrations No. 2,656,973, No. 2,927,757, No. 2,938,790 and No. 3,688,322 for the V VALERO and VALERO V marks.

The Complainant has owned and operated an Internet website under the domain name <valero.com> for many years.

Host Master, Transure Enterprise Ltd. is the registrant of the disputed domain name <myvalerocard.com>.

The disputed domain name was registered on July 25, 2011 with Above.com, Inc.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, in its Amended Complaint filed on October 29, 2011, the Complainant asserts that:

The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The disputed domain name is confusingly similar or identical to the VALERO trademark in the light of the fact that it incorporates its trademark in its entirety, with the sole exception of the addition of “my”, the generic word “card” and the generic top level domain name extension “.com”. Further, the Complainant submits that there is a greater use of confusion because of the notoriety of the Complainant and its trademarks.

The Respondent lacks rights or legitimate interests in the disputed domain name.

The Complainant states that the Respondent does not have any rights or legitimate interests in the disputed domain name. The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name that included its trademarks.

The disputed domain name has been registered and used in bad faith.

The Complainant asserts that the disputed domain name was registered in bad faith. The mere fact of registration of a domain name that is confusingly similar or identical to a famous trademark by an entity that has no relationship to that mark is itself evidence of bad faith registration and use. The Complainant asserts that the disputed domain name is being used with the intention to attract Internet users to a parking website with links to commercial websites that offer goods and services that are in competition with the Complainant’s goods and services.

The Complainant requests the Panel to issue a decision finding that the disputed domain name <myvalerocard.com> be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Policy provides specific remedies to a trademark owner against a registrant of a disputed domain name where the owner of the mark (the complainant) establishes each of the following elements:

(i) the disputed domain name is identical or confusingly similar to a trademark 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 was registered and is being used in bad faith.

The Complainant has the burden of proof in establishing each of these elements.

The Respondent has failed to file a formal Response in these proceedings and is therefore in default and the Panel shall draw such appropriate inferences therefrom, in accordance with paragraph 14(b) of the Rules.

A. Identical or Confusingly Similar

To prove this element, the Complainant must have trademark rights and the disputed domain name must be identical or confusingly similar to the Complainant’s trademark.

The Complainant has submitted evidence demonstrating that it is the owner of the registered trademark VALERO. The Complainant has also submitted in Annex 6 of the Complaint evidence of its registrations of trademarks containing the term “Valero”. The disputed domain name incorporates the Complainant’s mark in its entirety, with the exceptions of the addition of the unprotectable term “my”, the generic word “card” and the generic top level domain name extension “.com”.

The Panel notes that other WIPO UDRP panels have repeatedly held that the addition of a generic word to a well-known mark creates a confusing similarity between the disputed domain name and the trademark of the complainant. Bank of Nova Scotia v. Whois Protection, WIPO Case No. D2007-0884; Valero Energy Corporation, Valero Marketing and Supply Company v. Domain Name Proxy, LLC, Navigation Catalyst Systems, Inc., WIPO Case No. D2011-1227. The addition of the generic top level domain name extension “.com” is not germane to the Panel’s consideration as it does not provide any distinctiveness to the disputed domain name. Société Nationale des Chemins de Fer Français, SCNF v. Transure Enterprise Ltd/Above.com Domain Privacy, WIPO Case No. D2011-0447.

The Panel considers that the Complainant’s notoriety and the fact that its trademarks are well-known increase the confusing similarity with the disputed domain name.

In the light of the foregoing, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered mark and that paragraph 4(a)(i) if the Policy is satisfied.

B. Rights or Legitimate Interests

The burden of proof is on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. Under the UDRP, if a prima facie case is established by the Complainant, then the burden of production shifts to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy enumerates three, non-exclusive ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name: “Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making 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 did not submit a formal Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate.

The Panel finds that the Respondent, at the time of registration of the disputed domain name, most likely knew or should have known of the existence of the Complainant’s well-known VALERO trademark. See, Ingersoll-Rand Co. v. Frank Gully, d/b/a Advcomren, WIPO Case No. D2000-0021. The Complainant, who registered the trademark VALERO has not authorized, licensed, permitted or otherwise consented to the Respondent’s use of the mark in the disputed domain name. In Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055, the panel stated “in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear that no actual or bona fide or legitimate use of the domain name could be claimed by the Respondent.”

The Respondent has not attempted to make any bona fide or legitimate noncommercial or fair use of the disputed domain name. Instead the evidence suggests that the Respondent has intentionally chosen a domain name based on a registered trademark in order to generate traffic to commercial links leading to other websites. The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, and the Respondent has failed to demonstrate such rights or legitimate interests.

Accordingly, the Panel finds the Respondent has no rights or legitimate interests in respect of the disputed domain name and that paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a disputed 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 documented out-of-pocket costs directly related to the domain name;

(ii) the respondent has 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;

(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 website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s web site or location or of a product or service on its website or location.

The Complainant has demonstrated that its trademarks are well-known and that the disputed domain name incorporates in full its trademark and that the Respondent has no relationship to the VALERO trademark. The Panel shares the view that the registration of a disputed domain name that is confusingly similar or identical to a well-known trademark by any entity that does not have a relationship to that mark may be evidence of bad faith registration and use. See, Centurion Bank of Punjab Limited v. West Coast Consulting LLC, WIPO Case No. D2005-1319. The Complainant has provided evidence to the Panel that the website associated with the disputed domain name contains links to commercial websites that offer goods and services which are competitive to those offered by the Complainant. In particular, the disputed domain name offers information about some of the Complainant’s direct competitors, including “BP Gas Card”, “Mobil Gas Credit Card” and “Circle K Gas Card”. Consequently, the Panel finds that the Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to the websites, by creating a likelihood of confusion with the Complainant’s mark (paragraph 4(b)(iv) of the Policy).

The Respondent Above.com Domain Privacy has been the subject of at least 60 WIPO UDRP proceedings and 50 National Arbitration Forum UDRP proceedings (“NAF”) (Annexes 8 -10); the Respondent Transure Enterprise Ltd has been the subject of 68 WIPO UDRP proceedings and at least 47 NAF UDRP proceedings. The frequency of these successful challenges against the Respondents is in this Panel’s view a reflection of their blatant disregard of intellectual property and of their bad faith registration of domain names.

Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name under paragraphs 4(a)(iii) and 4(b) of the Policy.

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 <myvalerocard.com> be transferred to the Complainant.

Cherise Valles
Sole Panelist
Dated: December 15, 2011

 

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