WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Valero Energy Corporation and Valero Marketing and Supply Company v. Bingyi Qi

Case No. D2013-1990

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 Respondent is Bingyi Qi of Dandong, Liaoning, China

2. The Domain Name and Registrar

The disputed domain name <valeroenergy.mobi> (“the Disputed Domain Name”) is registered with PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 21, 2013. On November 22, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On November 23, 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 November 29, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 19, 2013. The Response was filed in Chinese with the Center on December 19, 2013.

The Center appointed Soh Kar Liang as the sole panelist in this matter on January 9, 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.

4. Factual Background

The Complainants are Valero Energy Corporation, a Delaware corporation, and its wholly-owned subsidiary Valero Marketing and Supply Company. The Complainants are manufacturers and marketers of transportation fuels, other petrochemical products and power. The first Complainant is a Fortune 500 company.

The Complainants have been using trademarks incorporating the word “Valero” (the “VALERO Marks”) for at least 34 years and have spent significant amounts in advertising, marketing and promoting them. The following are some of the trademark registrations for VALERO Marks in the United States:

In particular, registration 1,202,362 relates to the word mark VALERO ENERGY CORPORATION. The Complainants have registered the domain name <valero.com> and operate a website at “www.valero.com”.

The Respondent is Bingyi Qi from Dandong, Liaoning, China. There is very little information about the Respondent beyond the WhoIs information associated with the Disputed Domain Name and the contents of the Complaint.

The Disputed Domain Name was registered on September 7, 2010 and resolves to a Chinese language website. The homepage of the website provides information on Dandong City and its seafood products. The website offers a main menu with links which may be translated as “homepage”, “our services”, “contact us” and “about us”. The “our service” link leads to what appears to be an online sales catalog of many food products for which a visitor may request pricings. The “contact us” link provides the contact number of a Mr. Qi, which is presumably the Respondent. It is not clear from the evidence what the “about us” link leads to. The website does not contain any reference to the VALERO Marks other than as part of the fine print at the top of the main menu which states “欢迎访问valeroenergy 3G版网站” meaning “welcome to valeroenergy 3G website”.

On or about November 19, 2013, the Respondent replied to a demand letter of the Complainants to transfer the Disputed Domain Name. The Respondent’s reply asserted the Respondent’s right to register the Disputed Domain Name on the basis of “first come, first serve”, and communicated the Respondent’s willingness to consider transferring the Disputed Domain Name to the Complainants in exchange for a compensation of USD 10,000,000. The Complainants’ demand letter was not included in the evidence before the Panel.

5. Parties’ Contentions

A. Complainant

The Complainants contend that:

(a) The Disputed Domain Name is identical or confusingly similar to the VALERO Marks. The Top-Level Domain (“TLD”) “.mobi” is irrelevant to the Panel’s inquiry.

(b) The Respondent has no rights or any legitimate interests in the Disputed Domain Name. The Respondent is not commonly known by the Disputed Domain Name and is not making any legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain. The Complainants have not licensed or authorized the Respondent to use the VALERO Marks.

(c) The Disputed Domain Name was registered and is being used in bad faith. As one of the largest companies in the United States according to Fortune magazine, the Respondent must have been aware of the Complainants and the VALERO Marks. The Respondent intentionally registered the Disputed Domain Name for commercial gain. The Respondent’s offer to sell the Disputed Domain Name to the Complainants for USD 10,000,000 is clear evidence of bad faith.

B. Respondent

The Respondent contends that:

(a) The Complainants did not provide any evidence of trademark registration in China for VALERO and is not entitled to trademark protection in China. The Complainants also did not provide evidence of trademark registration for VALEROENERGY in the United States or China. Domain name registration and trademark registration are different concepts. Registration of the Disputed Domain Name does not give rise to confusion with trademark registration for VALERO;

(b) Anyone can register a domain name under the “.mobi” TLD. As no one registered the Disputed Domain Name, since the “.mobi” TLD became available 5 years ago, the Respondent successfully and legitimately registered it. The Respondent’s intention is to set up a mobile phone website under the Disputed Domain Name to benefit from the impending blossoming of mobile Internet business opportunities. The Respondent has no intention to transfer the Disputed Domain Name;

(c) Registration of domain names under the “.mobi” TLD is based on “first-come, first serve”. Being the first to register does not amount to bad faith. The Complainants do not enjoy civil rights over the Disputed Domain Name. Trademark rights should not extend to domain name rights and vice versa. The Respondent’s offer to transfer the Disputed Domain Name to the Complainants for USD 10,000,000 does not indicate that the Respondent has acted in bad faith. The Respondent did not believe the Complainants would accept the offer. The Complainants have not shown that the offer to transfer was initiated by the Respondent or that the Respondent is using the Disputed Domain Name to improperly compete with the Complainants. There are other domain names like <valero.pw> and <valero.kr> which are registered by other parties. The Respondent is not aware of the Complainants’ trademark rights.

6. Discussion and Findings

6.1 Language of Proceedings

The Complaint was filed in English, which is the language of the registration agreement. However, the Response was filed in Chinese although the Respondent did not make any request regarding the language of the proceeding. The Panel determines that English shall remain the language of the proceeding. As the Panel is conversant in both English and Chinese, the Panel shall proceed to make a determination based on the Complaint and Response as filed without any need for translation of the Response into English.

6.2 Discussion

To succeed in this proceeding, the Complainants must establish all three limbs of paragraph 4(a) of the Policy, namely;

(a) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights;

(b) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(c) The Disputed Domain Name was registered and is being used in bad faith

A. Identical or Confusingly Similar

In view of the trademark registrations for the VALERO Marks, the Complainants have shown that they have rights in the VALERO Marks. For the purposes of determining the first limb of paragraph 4(a) of the Policy, it is not a requirement that the Complainants’ trademark rights must extend to the jurisdiction in which the Respondent physically resides. It is sufficient under the first limb of paragraph 4(a) that the Complainants have trademark rights in the VALERO Marks, whether or not such trademark rights extend to China. This is consistent with the general consensus of WIPO UDRP panels under paragraph 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).

It is the consensus opinion of UDRP panels that the TLD is generally not taken into account when comparing a domain name with a trademark for confusing similarity. In the present case, the trademark VALERO is entirely incorporated into the Disputed Domain Name. The only difference is the addition of the suffix “energy” which is a descriptive term which in the Panel’s view does not distinguish the Disputed Domain Name from the trademark VALERO.

In addition, the only difference between the Complainants’ trademark VALERO ENERGY CORPORATION and the Disputed Domain Name is the absence of the word CORPORATION in the Disputed Domain Name. It is the Panel’s view that the Disputed Domain Name has incorporated the initial two words of the trademark VALERO ENERGY CORPORATION and is confusingly similar to the same.

In view of the above, the Panel is satisfied that the Complainants have met the first limb of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

It is the consensus view of UDRP panels that a complainant is only required to show a prima facie case under this element. The Complainants have confirmed that the Complainants have not authorized, licensed or otherwise permitted the Respondent to use the VALERO Marks. There is no evidence before the Panel to indicate that the Respondent is commonly known by the Disputed Domain Name. There is before the Panel, evidence that the Disputed Domain Name resolved to a website which purported to invite requests for prices of food products presented in an online catalogue. The Respondent did not comment on this evidence.

Regardless of whether the Respondent will achieve the claimed intention of setting up a mobile phone website to capitalize on growing mobile Internet business opportunities, the website resolved from the Disputed Domain Name as at the time of the Complaint clearly shows a commercial intent. The Respondent obviously did not intend the Disputed Domain Name for any noncommercial use.

Rather than offering some explanation or clarification on why the Respondent selected the Disputed Domain Name for registration, the Respondent instead argued forcefully that the Respondent is entitled to the Disputed Domain Name by the simple fact of having registered it first. However, the mere registration of the disputed domain name does not of itself confer rights or legitimate interests in the disputed domain name in the circumstances of this case. This finding is consistent with the consensus view of previous UDRP panels.

It is regrettable that the Respondent did not explain his/her reasons for choosing to register “valeroenergy” as a domain name. VALERO appears to be a coined word. It is not apparent that the food products on the website resolved from the Disputed Domain Name is associated with the word “energy”. It is also not obvious to the Panel how mobile Internet prospects could be related to the word “energy”. The Panel cannot conceive of any plausible reason why the Respondent would have chosen the Disputed Domain Name unless the Respondent must have been aware of the Complainants and/or the VALERO Marks.

In the circumstances, the Panel finds that the Complainants have established a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the Respondent has failed to rebut the same.

Therefore, the Panel is satisfied that the Complainants have met the second limb of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The Respondent suggested that his/her significant price of USD 10,000,000 for transferring the Disputed Domain Name to the Complainants was intended to push the Complainants away and not a genuine offer to secure commercial benefit. It is not evident from the Complaint or the Response that the letter from the Complainants which elicited the Respondent’s reply was other than a typical demand to turn over the Disputed Domain Name. It did not appear to the Panel that the Complainants’ letter was a solicitation to enter into a commercial transaction in relation to the Disputed Domain Name or an invitation to the Respondent to offer a price.

If the demand letter had been produced before the Panel, it would have been of immense assistance. Be that as it may, the Panel has to make the best of what is before it. Having regard to the circumstances, the Panel is inclined to believe that the Complainants’ letter was a plain demand for transfer of the Disputed Domain Name which did not solicit an offer for the Respondent to name a price for transfer. Despite the Respondent’s claim of ignorance about the Complainants’ trademark rights, the evidence in the proceeding does not support such a claim. In particular, as mentioned above, the Respondent’s choice of the Disputed Domain Name is uncanny and strongly suggests prior awareness of the VALERO Marks. The Respondent’s reply to the Complainants’ demand went into great length to justify the registration of the Disputed Domain Name before ending with a polite but succinct paragraph reproduced below in Chinese:

“但是收到你们邮件后，我意识到你们不希望我使用这个域名，我感到非常遗憾，这是不合理的，这样违背了域名注册相关规定，不过同时我也知道你们渴望得到此域名，你们再来信里提到让我把这域名转让给你们，你们可以给我一定的补偿，你们能出$1000,000.00我可以考虑的。”

The Google Translation included in the evidence translates this paragraph as follows:

“But after receiving your email, I realized that you do not want me to use the domain name, I am very sorry that this is unreasonable, so contrary to the relevant provisions of the domain name registration, but I also know that you desire to get this domain name, and ye in I mentioned in a letter this domain name transferred to you, and you can give me some compensation, you can out $ 1000,000.00 I can consider.”

Despite the imperfection of the Google Translation, the content is clear. The original paragraph in Chinese does not appear to the Panel to be in any sense insincere or intended to push the Complainants away. On the other hand, it seems clear to the Panel that it presents a clear message which could serve to start a price bargaining process. The Panel cannot imagine that the Respondent could have spent any amount even remotely close to USD 10,000,000 for registering and maintaining the Disputed Domain Name to-date.

Having regard to the totality of the available evidence, the Panel holds that the circumstances fall within that described in paragraph 4(b)(i) of the Policy, namely,

“circumstances indicating that [the Respondent has] registered or [the Respondent has] 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 [the Respondent’s] documented out-of-pocket costs directly related to the domain name”

The Respondent must have registered the Disputed Domain Name and laid in wait for the Complainants to notice it. When the opportunity surfaced, the Respondent quickly pounced upon the opportunity to secure a financial windfall for the transfer of the Disputed Domain Name.

The Panel holds that the third limb of paragraph 4(a) of the Policy is also established.

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 <valeroenergy.mobi> be transferred to the Complainants.

Kar Liang Soh
Sole Panelist
Dated: February 10, 2014