WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Valero Energy Corporation, Valero Marketing and Supply Company v. VEnergy, Valery
Case No. D2014-0268
1. The Parties
The 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.
The Respondent is VEnergy, Valery of Aberdeen City, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <valero-energies.com> 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 February 20, 2014. On February 21, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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 February 27, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was March 19, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 21, 2014.
The Center appointed Knud Wallberg as the sole panelist in this matter on March 27, 2014. 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, a Delaware corporation whose principal place of business is located in San Antonio, Texas, United States, and Valero Marketing and Supply Company, a wholly owned subsidiary of Valero Energy Corporation (jointly referred to as the “Complainant”).
The Complainant is the owner of a number of trademarks registered in the United States of America and elsewhere for the word mark VALERO, covering a number of goods and services connected with the oil and gas field, including in particular oil and gas exploration, production, processing, and distribution services.
The Complainant has used trademarks comprising VALERO continuously for more than 30 years, has spent millions of US dollars in advertising, marketing and promoting the VALERO brand in various advertising media. The Complainant has operated the website at “www.valero.com” for many years.
The disputed domain name was registered on November 13, 2013.
5. Parties’ Contentions
The disputed domain name is confusingly similar to the Complainant’s trademark VALERO.
The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has never been commonly known by the disputed domain name; has not used or made demonstrable preparations to use the disputed domain name; and is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain. The Complainant has not licensed to the Respondent the right to use the VALERO trademarks and the Respondent is not otherwise authorized to act on the Complainant’s behalf.
The Respondent has used the disputed domain name to engage in criminal and fraudulent activities. Mr. M […] is a Recruiting Specialist in Complainant’s Human Ressource Department. The Respondent has been impersonating Mr. M[…] to operate a sophisticated “419 scam” by contacting people who have applied for, or indicated an interest in, fictitious job openings posted by the Respondent on various job boards. The email address the Respondent has been using to perpetrate his/her scam is […]@valero-energies.com, and the Respondent uses that email address to extend “job offers” to unsuspecting victims. The Complainant attaches to the Complaint emails showing this use of the disputed domain name.
According to the Complainant, such a conduct described above does not constitute a bona fide offering of goods or services under Policy 4(c)(i) or a legitimate noncommercial or fair use under Policy 4(c)(iii).
Due to the notoriety of the Complainant and the Complainant´s mark, the Complainant states that the Respondent was undoubtedly aware of the Complainant’s prominence in the business world when it registered the disputed domain name incorporating the Complainant’s trademark.
The Complainant states also that the Respondent’s use of the VALERO trademarks in the disputed domain name is intended to assist the Respondent in conducting criminal and fraudulent activities for financial gain by using the Complainant’s trademarks. The Respondent’s use of the disputed domain name creates a likelihood of confusion with trademarks as to the source, sponsorship, affiliation or endorsement of the Respondent’s activities.
Finally, the Complainant states that the Respondent registered the disputed domain name <valero-energies.com> to prevent the Complainant from registering a domain name that reflects the VALERO trademark owned by the Complainant. Such conduct is evidence of bad faith under Policy paragraph 4(b)(ii).
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules the Panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered or is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences there from as it considers appropriate.
A. Identical or Confusingly Similar
The disputed domain name contains the Complainant’s distinctive and reputed trademark VALERO with the addition of the generic and in this connection descriptive term “energies” and the “.com” designation. Since the generic top-level domain (“gTLD”) designation may be disregarded for the purpose of this proceeding, the Panel finds that the disputed domain name is confusingly similar to a mark in which the Complainant has rights.
The Panel therefore finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled.
B. Rights or Legitimate Interests
According to the Complaint, the Complainant has not licensed or otherwise permitted the Respondent to use its trademark.
The Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not rebutted this and the way the Respondent is using the disputed domain name, makes it inconceivable to the Panel that any rights or legitimate interests may exist.
Consequently, the Panel finds that the conditions in paragraph 4(a)(ii), and paragraph 4(c) of the Policy are also fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove both registration and use of the disputed domain name in bad faith. Paragraph 4(b) of the Policy provides examples of circumstances which shall be evidence of registration or use in bad faith:
(i) circumstances indicating that the domain name 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 domain name 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 domain name holder has engaged in a pattern of such conduct; or
(ii) the domain name 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 domain name holder has intentionally attempted to attract, for commercial gain, Internet users to the domain name 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 holder’s website or location or of a product or service on the domain name holder’s website or location.
Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain name has been registered and is being used in bad faith.
Given the distinctive nature of the Complainant’s VALERO marks and the reputation of the mark, it is inconceivable to the Panel that the Respondent registered the disputed domain name without prior knowledge of the Complainant or without the intention of targeting the Complainant and potential employees of the Complainant.
The Panel therefore finds that the disputed domain name was registered in bad faith.
As to the use of the disputed domain name the Respondent is using the disputed domain name for a phishing scam to deceive potential employees of the Complainant to divulge sensitive information about themselves by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent´s activities. This constitutes bad faith use under the Policy, see inter alia National Westminster Bank plc v. Abdelilah Jadron, WIPO Case No. D2013-2232, NAS Rentals Holdings, Inc. v. Domains By Proxy LLC and Allison Mills, WIPO Case No. D2013-1812 and Valero Energy Corporation, Valero Marketing and Supply Company v. Maurine flavour seafoods, WIPO Case No. D2013-1849.
Noting that the disputed domain name incorporates a registered and widely known trademark, that no Response has been filed, and that there appears to be no conceivable good faith use that could be made by the Respondent of the disputed domain name, and considering all the facts and evidence, the Panel therefore finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.
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-energies.com> be transferred to the Complainant.
Date: April 10, 2014