WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Valero Energy Corporation, Valero Marketing and Supply Company v. Francis Broaddus

Case No. D2014-2083

1. The Parties

Complainant is Valero Energy Corporation, Valero Marketing and Supply Company of San Antonio, Texas, United States of America (“United States”), represented by Fasthoff Law Firm PLLC, United States.

Respondent is Francis Broaddus of Tulsa, Oklahoma, United States.

2. The Domain Names and Registrar

The disputed domain names <valeroenergylng.com>, <valeroenergylng.info>, <valeroenergylng.net> and <valeroenergylng.org> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 26, 2014. On November 26, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 26, 2014, 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 12, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 1, 2015. The Response was filed with the Center on January 1, 2015.

The Center appointed Michael A. Albert as the sole panelist in this matter on January 19, 2015. 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

Complainant owns several United States trademark registrations for the marks VALERO and VALERO ENERGY CORPORATION as well as other marks embodying the term VALERO (collectively, the “VALERO Marks”), some of which date back to 1982, and has continuously used these marks in commerce for over 34 years. During that time, Complainant has spent tens of millions of dollars on advertising and promotion in connection with these marks.

Respondent registered the disputed domain names in May, 2014.

5. Parties’ Contentions

A. Complainant

Complainant alleges that it owns longstanding trademark rights in the VALERO Marks that have been recognized by the USPTO and by several prior domain name dispute panels. It alleges that the disputed domain names incorporate its marks in full and are confusingly similar to these marks. It has never licensed or otherwise authorized Respondent to use the VALERO Marks or the disputed domain names. Respondent registered, and subsequently listed for auction, the disputed domain names. When contacted by Complainant, Respondent offered to sell Complainant the disputed domain names for USD 3,000 (total for five domain names, of which four are at issue here), which Complainant alleges constitutes holding the domain names “hostage” and does not constitute a bona fide use. Lastly, Complainant alleges that Respondent registered the disputed domain names to keep Complainant from being able to register domains reflecting its Marks, constituting bad faith under the Policy.

B. Respondent

Respondent did not file a formal response. In its informal response, it contends that Complainant could have purchased the domain names from an Internet domain name registrar prior to Respondent doing so. It further alleges that Complainant’s cost of pursuing this dispute exceeds, in legal fees, the cost of paying the price requested by Respondent to purchase the disputed domain names. Lastly, it states that it has “no further use” for the disputed domain names, thereby apparently acknowledging that it does not oppose a transfer.

6. Discussion and Findings

The Panel finds that Complainant has met the three requirements set forth under the Policy.

A. Identical or Confusingly Similar

The disputed domain names incorporate in full Complainant’s VALERO mark for which it has decades-old federal registrations and which it has used extensively in commerce for over 34 years. It is well established that a United States federal trademark registration creates a rebuttable presumption that a complainant has rights in a mark. See: Janus Int’l Holding Co. v. Rademacher, WIPO Case No. D2002-0201.

The disputed domain names are confusingly similar to the VALERO Marks owned by Complainant because each of them is comprised of one of Complainant’s marks in its entirety plus (i) the letters “lng,” which is a commonly accepted abbreviation within the energy industry for the generic phrase “liquefied natural gas,” and (ii) the generic top level domain extension, “.com”. Other panels have held that “the addition of a generic term does not limit the risk of confusion between a complainant’s trademark and a disputed domain name.” NOVARTIS AG v. David Sparkowich, WIPO Case No. D2013-1610 (internal citations omitted); Playboy Enterprises International, Inc. v. Federico Concas a.k.a John Smith, a.k.a. Orf3vsa, WIPO Case No. D2001-0745. The generic top level domain “.com” is irrelevant to the Panel’s inquiry. Société Nationale des Chemins de Fer Français, SNCF v. Transure Enterprise Ltd / Bargin Register 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).

Respondent’s domain names are thus confusingly similar to Complainant’s marks under Policy paragraph 4(a)(i).

B. Rights or Legitimate Interests

Complainant has never licensed or authorized Respondent to use its Marks and Respondent does not appear to be commonly known by any such domain name (nor does it contend otherwise in its Response).

A respondent’s offering of goods or services cannot be bona fide if the respondent is trading on the fame of a complainant’s mark. That is what Respondent appears to have done here.

Accordingly, Complainant has established that Respondent lacks rights or legitimate interests in the domain names.

C. Registered and Used in Bad Faith

The only use Respondent appears to have made of the domain names was to seek payment of several thousand dollars from Complainant for them – first via auction, and later in a direct negotiation.

At the time that Respondent registered the disputed domain names in May, 2014, Complainant was listed as the 9th largest company in the United States according to Fortune magazine. Despite his claims to the contrary in his informal reply email, it strains credulity to believe that a person who had never heard of Complainant would register four domain names containing the words “Valero Energy” and the abbreviation for “liquefied natural gas”. Respondent was undoubtedly aware of Complainant’s prominence in the business world when it registered the subject domains. Notwithstanding Respondent’s knowledge, Respondent intentionally registered, for commercial gain, a domain that is comprised of the Complainant’s marks. That constitutes bad faith registration and use.

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 names, <valeroenergylng.com>, <valeroenergylng.info>, <valeroenergylng.net> and valeroenergylng.org>, be transferred to the Complainant.

Michael A. Albert
Sole Panelist
Date: February 4, 2015