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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Valero Energy Corporation and Valero Marketing and Supply Company v. Domains By Proxy, LLC / Valeroenergyusa, Aditya Aggarwal

Case No. D2015-1062

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 Fasthoff Law Firm PLLC, United States of America.

The Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, United States of America / Valeroenergyusa, Aditya Aggarwal of Karnataka, India.

2. The Domain Name and Registrar

The disputed domain name <valeroenergyusa.com> is registered with Wild West Domains, LLC (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 19, 2015. On June 22, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 23, 2015, the Registrar 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 June 30, 2015 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 the same date.

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 1, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 21, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 22, 2015.

The Center appointed Alvaro Loureiro Oliveira as the sole panelist in this matter on July 30, 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

The Complainants are Valero Energy Corporation and Valero Marketing and Supply Company, a wholly-owned subsidiary of Valero Energy Corporation. They do business in the US and worldwide under the marks VALERO ENERGY, VALERO and other variations, in the energy, oil and retail fields. The Complainants are hereinafter referred to as "the Complainant".

Evidence of the international renown of the mark VALERO and of its variations was duly produced by the Complainant, as well as proof of the registrations owned throughout the world for these marks.

According to the Registrar's verification response, the disputed domain name was registered by the Respondent on May 7, 2015.

The disputed domain name, as at the date of this decision, resolves to a website that apparently provides tools to build a website.

5. Parties' Contentions

A. Complainant

The Complainant contends that the disputed domain name incorporates the trademark VALERO ENERGY, associated with the name of the country where it is particularly known, the US, in a clear attempt to create confusion and mislead the consumers.

The Complainant claims it does not have any relationship with the Respondent nor has it ever given the Respondent permission to use its mark or register any kind of domain name incorporating this mark.

The Complainant also states that the Respondent is using the disputed domain name to engage in criminal and fraudulent activities, by contacting individuals with fake job offers. The Complainant also alleges that the Respondent falsely uses the name of the Complainant's Vice President of Human Relations in at least one of these false offers.

B. Respondent

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

6. Discussion and Findings

In this Panel's view, the Complainant has satisfied the requirements specified under paragraph 4(a) of the Policy:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in respect of which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(ii) that the disputed domain name has been registered and used in bad faith.

A. Identical or Confusingly Similar

Regarding the first of the elements, the Panel finds that the Complainant's evidence suffices to prove its rights to the VALERO marks, including the trademark VALERO ENERGY CORPORATION, which are duly registered in the US.

Further, the Panel finds that the disputed domain name indeed reproduces the Complainant's mark and furthermore, the addition of the suffix "usa", an abbreviation of the geographical term for "United States of America", in a clear reference to the major market for the Complainant, intentionally leads to confusion.

Hence, the Panel finds that the first element of the Policy is present in this dispute.

B. Rights or Legitimate Interests

The Panel understands that the marks VALERO and VALERO ENERGY CORPORATION are undoubtedly linked to the Complainant, since they are not only registered marks in its name, but also are used to identify the Complainant's business and related goods and services.

The Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant's contentions.

Besides, the Complainant provided enough evidence of the renown of its marks, especially in the US. Hence, the Panel understands that the Respondent should have been aware of the mark and its direct relation to the Complainant.

Thus, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith, under paragraph 4(b) of the Policy.

The Complainant's trademarks VALERO and VALERO ENERGY CORPORATION are well-known trademarks. In this Panel's view, the Respondent was aware of the Complainant's rights to these marks at the time the disputed domain name was registered, due to the fact that the Respondent resides in the same jurisdiction where the Complainant has its business. These facts indicate that such registration was made in bad faith.

Besides, there is sufficient evidence that the Respondent is using the disputed domain name to contact third parties under the false pretense of offering jobs at the Complainant's, leading these parties to provide the Respondent private information. In addition these contacts were made falsely using the name of the Complainant's Vice President for Human Resources.

Based on that evidence, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith, with the intention of illegally obtaining benefits and harming the Complainant's reputation in the market.

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 <valeroenergyusa.com> be transferred to the Complainant.

Alvaro Loureiro Oliveira
Sole Panelist
Date: August 13, 2015

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