WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Valero Energy Corporation, Valero Marketing and Supply Company v. ICS INC. / Contact Privacy, Inc. Customer 0131720907
Case No. D2012-2398
1. The Parties
Complainant is Valero Energy Corporation, Valero Marketing and Supply Company of San Antonio, Texas, United States of America, represented by Adams and Reese LLP, United States of America.
Respondent is ICS INC. of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland; Contact Privacy, Inc. Customer 0131720907 of Toronto, Ontario, Canada.
2. The Domain Name and Registrar
The disputed domain name <valerocredit.com> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on December 5, 2012. On December 6, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 6, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on December 7, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on the same day.
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 Respondent of the Complaint, and the proceedings commenced on December 11, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 31, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 3, 2013.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on January 14, 2013. 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
This Complaint is filed by Valero Energy Corporation, a Delaware corporation whose principal place of business is located in San Antonio, Texas, United States, and Valero Marketing Supply Company, a wholly owned subsidiary of Valero Energy Corporation, jointly referred to in the Complaint as well as herein as “Complainant”.
Complainant apparently is active in the petroleum industry and offers, inter alia, a consumer retail credit card that allows consumers to purchase gasoline and other goods and services. Complainant has been rated by the Fortune Magazine as the 12th largest company in the United States in 2006.
Complainant has submitted evidence that it is the registered owner of numerous trademarks relating to the designation VALERO, including the following:
- Word mark VALERO, United States Patent and Trademark Office (USPTO), Registration Number: 1,314,004, Registration Date: January 8, 1985; Status: Active;
- Word mark VALERO, United States Patent and Trademark Office (USPTO), Registration Number: 2,560,091, Registration Date: April 9, 2002; Status: Active;
- Word mark VALERO, United States Patent and Trademark Office (USPTO), Registration Number: 2,656,971, Registration Date: December 3, 2002; Status: Active.
The disputed domain name <valerocredit.com> was registered on July 8, 2012. It redirects to a website at “www.valerocredit.com”, which is a typical PPC website with, inter alia, hyperlinks to commercially active websites of numerous third parties.
Complainant requests that the disputed domain name be transferred to Complainant.
5. Parties’ Contentions
Complainant asserts to have continuously used the VALERO trademark in commerce for at least 31 years, during which Complainant has spent tens of millions of dollars advertising, marketing and promoting the VALERO brands in the United States and throughout the world. Complainant concludes that its VALERO trademark has thereby developed extensive goodwill and favorable consumer recognition.
Complainant claims to own the domain name <valero.com> under which Complainant has been operating an Internet website for many years in order to promote its business and services.
Complainant suggests that the disputed domain name is confusingly similar to Complainant’s VALERO trademark, because (1) the disputed domain name is comprised of Complainant’s trademark in its entirety; and (2) the mere addition of the generic word “credit” is not capable to distinguish the disputed domain name therefrom.
Complainant further claims that Respondent has no rights or legitimate interests in respect of the disputed domain name, because (1) Complainant has never licensed or otherwise authorized Respondent the right to use the VALERO trademark; (2) Respondent has never been commonly known by the disputed domain name nor has Respondent used it or made demonstrable preparations to use the disputed domain name nor to make a legitimate noncommercial or fair use thereof without intent for commercial gain; and finally (3) Respondent, quite to the contrary, is using the disputed domain name to operate a domain name parking website for profit, which is intended to trade on the fame of Complainant’s VALERO trademark by resolving to third parties’ website, many of which are direct competitors to Complainant on the petroleum market, including “BP”, “Exxon” and “Sunoco”.
Finally, Complainant asserts that the disputed domain name was registered and is being used in bad faith, since (1) given the world-wide recognition of Complainant’s VALERO trademark, Respondent undoubtedly was aware of Complainant’s prominence in the business world when it registered the disputed domain name and, therefore, did so for commercial gain; (2) Respondent’s use of the VALERO trademark in the disputed domain name is intended to attract Complainant’s customers and other Internet users for financial gain by creating a likelihood of confusion with the VALERO trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s website and the goods and services advertised thereon; and (3) Respondent used a nominee, e.g. Contact Privacy, for the purpose of hiding its identity from the public at the time that the Complaint was filed.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That Respondent has no rights or 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.
Respondent's default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(e) of the Rules provides that if Respondent does not submit a Response, in the absence of special circumstances, the Panel is to decide the dispute solely based upon the Complaint.
A. Identical or Confusingly Similar
The Panel concludes that the disputed domain name <valerocredit.com> is confusingly similar to the VALERO trademarks in which Complainant has shown to have rights.
The disputed domain name incorporates the VALERO trademark in its entirety. Moreover, it has been held in numerous UDRP decisions and has meanwhile become a consensus view among UDRP panelists (see WIPO Overview of Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.9) that the addition of a generic or descriptive term or geographical wording 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. Accordingly, the Panel finds the mere addition of the generic term “credit” is not capable to dispel the confusing similarity arising from the incorporation of Complainant’s VALERO trademark into the disputed domain name.
Therefore, the first element under the Policy as set forth by paragraph 4(a)(i) in the case at hand is fulfilled.
B. Rights or Legitimate Interests
The Panel is further convinced that on the basis of Complainant’s undisputed contentions, Respondent apparently has neither made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent made a legitimate, noncommercial or fair use without intent for commercial gain.
Complainant has produced evidence that the disputed domain name redirects to a PPC website at “www.valerocredit.com”, which in turn redirects Internet users to a variety of third parties’ websites, which are not at all specifically tailored to Complainant, but redirect, inter alia, to some of Complainant’s direct competitors on the petroleum market, such as “BP”, “Exxon” and “Sunoco”.
The Panel, therefore, concludes that Respondent – irrespective of the alleged extensive goodwill and favorable consumer recognition of the VALERO trademark – apparently was aware of the said trademark at the time of the registration of the disputed domain name and that the latter obviously alludes to Complainant’s trademark and business. Such use of the disputed domain name to seek “pay-per-clicks” from those diverted Internet users who are trying to reach Complainant due to the confusing similarity of the disputed domain name with Complainant’s VALERO trademark end up with Respondent’s Internet presence at “www.valerocredit.com” is neither “noncommercial”, because it was predominantly for the purpose of generating advertising revenues, nor it is “fair”, because Internet users by confusion are brought to a general website with information about a variety of (petroleum and related credit card) matters that are not specifically tailored to Complainant.
Moreover, such use is also not fulfilling the requirements of a bona fide offering of goods or services, because (1) Respondent obviously has neither been authorized to use Complainant’s VALERO trademark as a domain name or on Respondent’s website or in any other way; and (2) Respondent’s name apparently does not correspond to Complainant’s VALERO trademark nor is any other reasonable explanation apparent why Respondent should rely on the designation “Valero” and/or “Valero Credit” as it is contained in the disputed domain name.
Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 2.0, paragraph 2.1). In the case at hand, Respondent did not reply to Complainant’s allegations as they were included in the Complaint duly notified to Respondent by the Center on December 11, 2012.
Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and thus the second element of the Policy.
C. Registered and Used in Bad Faith
The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith.
The Panel takes the view that the redirection of the disputed domain name, which is confusingly similar to Complainant’s VALERO trademark, to a standardized PPC website in order to generate “pay-per-click” commissions without Complainant’s permission to do so is a clear indication that Respondent intentionally attempted to attract, for commercial gain, Internet users to its own website, by creating a likelihood of confusion with Complainant’s VALERO trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s website. Such circumstance shall be evidence of registration and use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
In connection with this finding, it also carries weight in the eyes of the Panel that Respondent not only made use of a privacy service in order to conceal its true identity, but that Respondent apparently provided incomplete WhoIs information. Those circumstances taken all together throw a light on Respondent’s behavior which at least supports the finding of a registration and use of the disputed domain name in bad faith.
Therefore, the Panel finds that also the third element under the Policy set forth by paragraph 4(a)(iii) is fulfilled and that, accordingly, Complainant has satisfied all of the three requirements of paragraph 4(a) of the Policy.
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 <valerocredit.com> be transferred to Complainant.
Stephanie G. Hartung
Date: January 22, 2013