WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Valero Energy Corporation and Valero Marketing and Supply Company v. John Williams
Case No. D2015-1039
1. The Parties
The Complainant is Valero Energy Corporation and Valero Marketing and Supply Company of San Antonio, Texas, United States of America ("U.S."), represented by Fasthoff Law Firm PLLC, U.S.
The Respondent is John Williams of New York, New York, U.S.
2. The Domain Name and Registrar
The disputed domain name <valeroenergy-corp.com> ("Domain Name") is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 18, 2015 listing John Williams of New York, New York, U.S., as the Respondent. On June 18, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 19, 2015, the Registrar transmitted by email to the Center its verification response stating that the WhoIs record for the Domain Name indicates that John Williams of New York, New York, U.S., is the Respondent. Shortly thereafter, the Complainant was put on notice that the Domain Name was expiring in several weeks and that in order to maintain this proceeding against the Domain Name, the registration would need to be renewed. On June 25, 2015, the Domain Name was renewed by the Complainant and the Registrar placed the Domain Name in Registrar HOLD and Registrar LOCK status per ICANN's Registrar Accreditation Agreement (the "RAA"), section 126.96.36.199. Further and as required by the RAA, section 188.8.131.52, the Registrar removed Mr. Williams' information in the WhoIs record and replaced this information with that of "Directi" of Mumbai, India for the remainder of this proceeding. Mr. Williams accordingly remains the Respondent in this proceeding.
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 July 2, 2015. In accordance with the Rules, paragraph 5(a), the due date for the Respondent to file a Response was July 22, 2015. The Respondent did not submit any response with respect to this proceeding. The Center notified the parties of the Respondent's default on July 23, 2015.
The Center appointed Marylee Jenkins as the sole panelist in this matter on August 5, 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
Based on the review of the uncontested evidence submitted along with searches of the Trademark Electronic Search System and assignment database of the U.S. Patent and Trademark Office, the Panel determines that the Complainant is the owner of U.S. Trademark Registration Nos. 1,314,004, 2,656,971, 3,108,715 and 4,216,650 for VALERO registered on December 3, 2002, June 27, 2006 and October 2, 2012, respectively, and covering services in one or more international classes 35, 36 and 37; U.S. Trademark Registration Nos. 2,656,973, 2,927,757, 2,938,790 and 3,688,322 for V VALERO and design registered December 3, 2002, February 22, 2005, April 5, 2005 and September 29, 2009, respectively, and covering goods in international class 4 and services in one or more international classes 35, 36, 37 and 40; and U.S. Trademark Registration No. 1,202,362 for VALERO ENERGY CORPORATION and design registered on July 20, 1982 and covering services in international class 42 (individually and collectively the "Complainant's Marks"). The Complainant has also continuously owned and operated a website accessible at the domain name <valero.com> for many years, and utilizes that domain name for company email addresses through which it communicates internally, with customers, vendors, and the public in general.
The Domain Name was created on July 13, 2014 and, as set forth above, has been renewed by the Complainant during this proceeding. The Domain Name currently redirects to the Complainant's website at "www.valero.com".
5. Parties' Contentions
The Complainant states that it is a leader in the business world and was recently listed as the ninth largest company in the United States according to a leading financial periodical. Specifically, it is actively involved in the field of oil and gas exploration, production, processing, and distribution, as well as related industries. The Complainant alleges that it has spent tens of millions of dollars advertising, marketing, and promoting the Valero Energy Corporation and the VALERO brand in the United States and throughout the world via a wide variety of media formats, including print, television, radio, Internet, billboards, and signage. Moreover, the Complainant alleges that its significant monetary investment and continuous use of the Complainant's Marks to advertise, market and promote its company and brand over more than three decades has engendered extensive goodwill and favorable consumer recognition of the Complainant's Marks. The Complainant further states that it is the owner of all rights in and to the Complainant's Marks.
The Complainant alleges that the Respondent registered the Domain Name on or about July 13, 2014, which was well after the Complainant's first use of the Complainant's Marks. The Complainant further alleges that the Domain Name wholly incorporates the Complainant's Marks and that the Respondent cannot defend against a finding of confusing similarity merely by adding generic terms to the Domain Name, such as "-corp," which is presumably intended as a contraction of the word "corporation." The Complainant therefore alleges that the Respondent's Domain Name is confusingly similar to the Complainant's Marks in which the Complainant has rights.
The Complainant further alleges that the Respondent should be considered as having no rights or legitimate interests in respect to the Domain Name based on the Respondent not: (i) being commonly known by the Domain Name; (ii) having used or made demonstrable preparations to use the Domain Name; (iii) making legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain; or (iv) acquired any trademark or service mark rights therein by a way of a license to use the Complainant's Marks. Additionally, the Complainant has never authorized the Respondent to register or use the Domain Name or to manufacture or distribute goods or services for the Complainant. Thus, the Complainant alleges that there is no bona fide use of the Domain Name by the Respondent.
Additionally, the Complainant alleges that given the Complainant's Marks have been registered and have been in use for over 31 years, given the strength of the Complainant's Marks and given the content of the website to which the Domain Name is directed specifically referencing the Complainant and the Complainant's Marks, there is no doubt that the Respondent had full knowledge of the Complainant's rights in and to the Complainant's Marks. Further, the Complainant alleges that the Respondent is not making a legitimate, noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant's Marks. Nor does the Respondent have any authority or license to manufacture, distribute or sell products or services using the Complainant's Marks. Moreover, the Complainant alleges that the Respondent's improper use of the Complainant's Marks repeatedly on the website at the Domain Name poses a real and serious risk of weakening the Complainant's Marks and diminishing the inherent distinctive nature thereof, all to the detriment of the Complainant. In addition, the Complainant alleges that the Respondent's site is not only directed to the Complainant's products, but also directs users to products of its competitors.
The Complainant alleges that the Respondent has registered and is using the Domain Name in an intentional attempt to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the Complainant's Marks as to source, sponsorship, affiliation, or endorsement. Particularly, the Complainant alleges that given the strong reputation and brand awareness of the Complainant's Marks, both in the U.S. and globally, and the frequency of references to the Complainant's Marks on the Respondent's website, it is inconceivable that the Respondent chose the Domain Name without being consciously aware of the connection it would make with the Complainant's business.
The Complainant further alleges that the Respondent is using the Domain Name in order to perpetrate "419" scams and other fraudulent activities for financial gain. For example, the Complainant has presented evidence that the Respondent's email address: (1) is listed in online databases that track addresses associated with 419 scams; and (2) was used in a contract for the sale of a large volume of petroleum wherein the seller fraudulently claimed to be acting as an agent of the Complainant. In further support of this argument, the Complainant has asserted that the Respondent currently has the Domain Name redirecting to the Complainant's own website. In addition, the Respondent has provided false information in the contact details of the registration for the Domain Name (i.e., the address listed is an actual address of one of the Complainant's competitors). The Complainant thus argues that the Respondent has registered and is using the Domain Name in bad faith.
No response was filed by the Respondent with respect to this proceeding.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the domain name holder is to submit to a mandatory administrative proceeding in the event that a third party (complainant) asserts to an ICANN-approved dispute resolution service provider that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the domain name holder 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.
Under paragraph 14(b) of the Rules, the Panel shall draw such inferences from the Respondent's default as the Panel considers appropriate. Nevertheless, the Panel may rule in the Complainant's favor only after the Complainant has proven that the above-listed elements are present.
A. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, the Complainant is required to establish that the Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights. The Panel finds that the Complainant has provided sufficient evidence to establish that it is the owner of and has rights in and to the Complainant's Marks.
A review of the second-level domain "valeroenergy-corp" of the Domain Name shows that it comprises the Complainant's Marks (i.e., the federally registered mark VALERO in its entirety as well as an abbreviated version of the Complainant's trade name and mark VALERO ENERGY CORPORATION with a hyphen located between the words "energy" and "corp"). The Panel concludes that the abbreviation of the word "corporation" and the addition of the hyphen do not differentiate the Domain Name from the Complainant's Marks. Rather the Respondent's abbreviation of the Complainant's mark VALERO ENERGY CORPORATION and insertion of a hyphen in the Domain Name show that the Respondent was clearly aware of the Complainant's Marks when registering the Domain Name. The Panel therefore finds that the Domain Name is confusingly similar to the Complainant's Marks and that paragraph 4(a)(i) has been satisfied.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out circumstances, in particular but without limitation, which, if found by the Panel to be proven based on her evaluation of all of the evidence presented, can demonstrate the holder's rights to or legitimate interests in a domain name. These circumstances include:
(i) before any notice to the holder of the dispute, the holder's 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) the holder (as an individual, business, or other organization) has been commonly known by the domain name, even if the holder has acquired no trademark or service mark rights; or
(iii) the domain name holder 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 or service mark at issue.
No evidence has been presented that, before any notice to the Respondent of this dispute, the Respondent was using or was making demonstrable preparations to use the Domain Name in connection with any type of bona fide offering of goods or services or that the Respondent has been commonly known, as an individual, business or otherwise by the Domain Name.
The uncontested evidence shows that the Complainant had well established rights to its trade name and the Complainant's Marks at the time of the Respondent's registration of the Domain Name and that the Respondent nevertheless registered the Domain Name. The fact that the Domain Name redirects to the Complainant's website does not somehow create a legitimate noncommercial or fair use of the Domain Name by the Respondent. Rather this redirection of Internet users accessing the Domain Name is clearly an attempt by the Respondent to misleadingly divert consumers for financial gain in some fashion. Coupled with the Complainant's uncontested evidence of fraudulent activities performed and information provided by the Respondent, the Panel does not find any rights or legitimate interests in the Domain Name by the Respondent. The Panel, therefore, concludes that the Respondent has no rights or legitimate interests in the Domain Name and that paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that evidence of registration and use in bad faith by the holder includes, but is not limited to:
(i) circumstances indicating that the holder has registered or 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 holder's documented out-of-pocket costs directly related to the domain name; or
(ii) the holder 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 holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor, or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the holder's website or location.
Based upon the undisputed evidence submitted by the Complainant, the Panel finds that the Respondent clearly had knowledge of the Complainant's Marks and trade name when registering the Domain Name. This finding is clearly supported by the uncontested evidence showing that the Domain Name was registered well after the Complainant began use of the Complainant's Marks and trade name. Furthermore, the evidence shows that the Respondent had been using the Complainant's trade name and address in email correspondence so as to perpetrate 419 scams as well as other fraudulent activities. This evidence therefore shows that the Respondent was well aware of the Complainant's business, the Complainant's Marks, its trade name and its own domain name. Based on this cumulative evidence, the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its online presence via emails incorporating the Domain Name thereby creating a likelihood of confusion with the Complainant's Marks and name as to the source, sponsorship, affiliation or endorsement thereof.
Additionally, the Complainant has submitted evidence of the Respondent's bad faith by showing the Respondent's use of false contact information in the Domain Name registration. The Panel agrees that the Respondent's use of false contact information to conceal its identity is additional proof of the Respondent's bad faith registration and use of the Domain Name. The Panel further finds that the Respondent was clearly using the Domain Name in an attempt to pass itself off as the Complainant so as to engage in such fraudulent activities. The Panel accordingly concludes that the Respondent registered and is using the Domain Name in bad faith and that paragraph 4(a)(iii) of the Policy has been satisfied.
For the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the Domain Name <valeroenergy-corp.com> be transferred to the Complainant.
Date: August 17, 2015