WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Valero Energy Corporation, Valero Marketing and Supply Company v. Domain Administrator / Rudy Burriss

Case No. D2018-1257

1. The Parties

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

The Respondent is Domain Administrator, PrivacyGuardian.org of Phoenix, Arizona, United States / Rudy Burriss of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).

2. The Domain Name and Registrar

The disputed domain name <valero-energy-us.com> is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 5, 2018. On June 6, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 6, 2018, 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 12, 2018 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 June 12, 2018.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 13, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 3, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 4, 2018.

The Center appointed Nathalie Dreyfus as the sole panelist in this matter on July 13, 2018. 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, Valero Energy Corporation and Valero Marketing and Supply Company, is an international petroleum refiner, owning and operating 16 refineries around the world.

The Complainant is the worldwide owner of numerous VALERO trademarks including (but not limited to):

- United States Trademark VALERO (word) No. 1314004, registered on January 8, 1985, duly renewed for services in class 42

- United States Trademark VALERO (word) No. 2656971, registered on December 3, 2002, duly renewed for services in classes 35 and 37

- United States Trademark VALERO V (semi-figurative) No. 2656973, registered on December 3, 2002, duly renewed for services in classes 35 and 37

- United States Trademark V VALERO (semi-figurative) No. 3688322, registered on September 29, 2009, for services in class 40

- United States Trademark V VALERO (semi-figurative) No. 2938790, registered on April 5, 2005, duly renewed for services in class 36

- United States Trademark VALERO (word) No. 4216650, registered on October 2, 2012, for services in class 36

- United States Trademark V VALERO (semi-figurative) No. 2927757, registered on February 22, 2005, duly renewed for services in class 4

- United States Trademark VALERO (semi-figurative) No. 3108715, registered on June 27, 2006, duly renewed for services in class 35

The Complainant is also the owner of the domain name <valero.com>.

The disputed domain name <valero-energy-us.com> was registered on May 22, 2018 and redirects to the Complainant’s official website <valero.com>.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following assertions:

(i) that the disputed domain name is identical or confusingly similar to the Complainant’s VALERO trademarks;

(ii) that the Respondent has no rights nor any legitimate interests in respect of the disputed domain name; and

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

The Complainant argues that the disputed domain name is confusingly similar to the Complainant’s trademarks since it consists of the entire VALERO trademark combined with the generic term “energy” and the geographical term “us”.

The Complainant claims that the Respondent has no rights or legitimate interests in respect to the disputed domain name. The Respondent does not have business or legal relationships with the Complainant, nor does the Respondent have any authorization from the Complainant to register the disputed domain name or any domain name corresponding to the VALERO trademarks. Furthermore, the Complainant argues that the Respondent has engaged in criminal conduct by using the disputed domain name in an email scheme with the aim of collecting personal and financial data.

The Complainant further argues that the domain name was registered and has been used in bad faith. The Complainant also argues that by registering the disputed domain name the Respondent aimed to take commercial advantage of the reputation of the VALERO trademarks owned by the Complainant. VALERO trademarks are well known in the United States, being the 37th largest United States company. The Complainant further argues that the fact that the Respondent had provided false contact information to the registrar constitutes further evidence of bad faith.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant has submitted the evidence of its rights in VALERO in the form of trademarks and a domain name.

The disputed domain name <valero-energy-us.com> consists of the Complainant’s VALERO trademarks, of the dictionary term “energy”, and of the geographical term “us” that represent the Complainant’s sector of activity and the geographical location where the Complainant’s headquarters are located. It is sufficient for finding confusing similarity according to the Policy’s terms. Previous panels have stated that “the addition of merely generic, descriptive or geographical words to a trademark in a domain name is normally insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP” (See Accor SA v. Domain Admin, C/O ID#10760, Privacy Protection Service INC d/b/a PrivacyProtect.org / Yogesh Bhardwaj, WIPO Case No. D2017-1225).

Furthermore, the Panel states that the applicable generic Top-Level Domain (“gTLD”), such as “.com”, in a domain name is considered a standard registration requirement and, as such, is disregarded under the confusing similarity test (See RX America, LLC v. Matthew Smith, WIPO Case No. D2005-0540; Sanofi‑Aventis v. US Online Pharmacies, WIPO Case No. D2006-0582).

Consequently, the Panel finds that the requirements of paragraph 4(a)(i) of the Policy are fulfilled.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent'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 respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent 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 trade mark or service mark at issue.

Although the Policy addresses the ways in which a respondent may demonstrate its rights and legitimate interests in a disputed domain name, it is well established that, as stated in section 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), a complainant is required to offer a prima facie case showing that the respondent does not have rights or legitimate interests. Once such prima facie case is established, the burden of proof shifts to the respondent to come forward with relevant evidence demonstrating his rights and legitimate interests in the domain name. If the respondent comes forward with relevant evidence of its rights and legitimate interests, the panel weighs all the evidence with the burden of proof always remaining with the complainant.

The Respondent is not sponsored by or affiliated with the Complainant in any way.

The Respondent is not commonly known by the disputed domain name, which evinces a lack of rights or legitimate interests (see Red Bull GmbH v. Harold Gutch, WIPO Case No. D2000-0766) in the disputed domain name at the time of registration.

Furthermore, the Complainant has not licensed, authorized, or permitted the Respondent to register domain names incorporating the Complainant’s trademarks. “In the absence of any license or permission from the complainant to use its trademark, no actual or contemplated bona fide or legitimate use of the Disputed Domain Names could reasonably be claimed” (See LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master, WIPO Case No. D2010-0138).

The Respondent uses the disputed domain name to redirect Internet users to the Complainant’s official website. In addition, the Complainant provided evidence of an email scheme perpetrated using the disputed domain name in which emails soliciting personal and financial data were sent by an individual impersonating an employee of the Complainant. Therefore, the Respondent does not use the disputed domain name for a bona fide offering of goods or services or for legitimate noncommercial causes as permitted under the Policy, paragraph 4(c)(i).

For all the above-mentioned reasons, this Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Pursuant to the Policy, paragraph 4(a)(iii), the Complainant must show that the Respondent has registered and uses the disputed domain name in bad faith.

The Panel finds that the Respondent must have been aware of the Complainant’s reputation with respect to the VALERO trademarks at the time of registering the disputed domain name. According to the evidence filed by the Complainant, the fact that the Respondent used the combination of the Complainant’s trademark, the Complainant’s sector of activity and the country abbreviation “us” is likely to mislead Internet users, and it proves that the Respondent knew about the Complainant’s trademarks before registering the disputed domain name. Moreover, the fact that the Respondent redirects the disputed domain name to the Complainant’s official website constitutes further proof that the Respondent knew about the Complaint’s trademarks and its business when the Respondent registered the disputed domain name (See Statoil ASA v. WhoisGuard Protected, WhoisGuard, Inc / Svreer Kennoth, WIPO Case No. D2018-0965).

That the Respondent more than likely knew of the Complainant’s trademarks implies that the disputed domain name registration was made in bad faith. It should also be taken into consideration that the VALERO trademarks owned by the Complainant were registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735). WIPO Overview 3.0, section 3.2.2 states as follows:

“Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.”

The fact that there is a clear absence of rights or legitimate interests coupled with no credible explanation for the Respondent’s choice of the domain name is also a significant factor to consider (as stated in section 3.1.1 of WIPO Overview 3.0). The disputed domain name falls into the category stated above, and the Panel finds that its registration is in bad faith.

The disputed domain name is confusingly similar to the Complainant’s trademark. In this case, the Panel states that the combination of the Complainant’s Trademarks / Company name and the sector of activity together with the name of the country where it is headquartered further increases the risk of confusion.

Previous panels found that “[a] likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (Edmunds.com, Inc. v. Triple E Holdings Limited, WIPO Case No. D2006-1095).

Therefore, the Panel finds that the Respondent has registered and uses the disputed domain name in bad faith under paragraph 4(a)(iii) 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 <valero-energy-us.com> be transferred to the Complainant.

Nathalie Dreyfus
Sole Panelist
Date: August 4, 2018