WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Valero Energy Corporation and Valero Marketing and Supply Company v. Domains By Proxy, LLC / Valero Energy
Case No. D2016-0876
1. The Parties
Complainants are Valero Energy Corporation and Valero Marketing and Supply Company, both of San Antonio, Texas, United States of America (United States), represented by Fasthoff Law Firm PLLC, United States.
Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, United States / Valero Energy of San Antonio, Texas, United States.
2. The Domain Name and Registrar
The disputed domain name <thevalero.com> is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 30, 2016. On May 2, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 3, 2016, 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 Complainants on May 9, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting Complainants to submit an amended Complaint. Complainants filed an amended Complaint on May 10, 2016.
The Center verified that the Complaint together with the amended Complaint (both hereinafter referred together as 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 13, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 2, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on June 3, 2016.
The Center appointed Steven L. Snyder as the sole panelist in this matter on June 27, 2016. 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 Valero Marketing and Supply Company is a wholly-owned subsidiary of the Valero Energy Corporation, which is based in San Antonio, Texas, United States. In the Complaint, the two companies refer to themselves in the singular as "Complainant" and for this proceeding will be also be referred to in the singular form.
Founded in 1980, Complainant has grown to be an international manufacturer and marketer of transportation fuels, other petrochemical products and power. Over the years, Complainant has registered more than a dozen trademarks with the United States Patent and Trademark Office. Many of these marks feature the VALERO mark either by itself or in combination with other words. Complainant's registered marks include the following: V VALERO ENERGY PARTNERS LP; V VALERO; VALERO; and V VALERO KEEPING AMERICA MOVING. See United States Trademark Registrations Nos. 4594277, 4494933, 4494828, 4221997 and 1202362 (registered as early as on July 20, 1982 and claiming first use in commerce on November 9, 1979).
Respondent also claims to be named Valero Energy and to also be based in San Antonio, Texas, based on the WhoIs records. The disputed domain name was registered on April 11, 2016, and does not link to an active website.
5. Parties' Contentions
Complainant contends that Respondent's name and address are both shams: "The Respondent … is someone masquerading as 'Valero Energy' who provided a fake address" to the Registrar.
In contrast, Complainant states that it is a real corporation that has "continuously used the VALERO ENERGY CORPORATION mark in commerce for at least 34 years and has used the VALERO mark in commerce for at least 31 years." The VALERO ENERGY CORPORATION mark is used for oil and gas exploration, production, and distribution services. The VALERO mark is also used for those services, as well as for convenience store services, automobile service station services, car wash services, credit card services, and in connection with gasoline, diesel fuel and lubricants. Complainant uses the VALERO mark as its domain name: <valero.com>.
Over the past three decades, Complainant has obtained numerous registrations for its marks from the United States Patent and Trademark Office. Due to the mark's long and extensive usage, Complainant contends its VALERO trademarks "have developed extensive goodwill and favorable consumer recognition."
Complainant argues that its registrations are sufficient evidence that it owns the VALERO trademark: "Proof of a U.S. federal trademark registration creates a rebuttable presumption that a complainant has rights in a mark"
In Complainant's opinion, the disputed domain name, <thevalero.com>, "is confusingly similar to the Trademarks owned by Complainant because it is comprised of Complainant's VALERO and VALERO ENERGY CORPORATION marks in their entirety plus the generic word 'the' and the generic top level domain extension, .com."
Respondent does not have any rights or legitimate interests in the disputed domain name, according to Complainant: "Respondent has never been commonly known by the domain name; has not used or made demonstrable preparations to use the domain; and is not making a legitimate noncommercial or fair use of the domain without intent for commercial gain. Complainant has not licensed to Respondent the right to use the VALERO ENERGY CORPORATION or VALERO marks, and Respondent is not otherwise authorized to act on Complainant's behalf."
Complainant claims that Respondent has used the disputed domain name to mislead job seekers: "Respondent has used the domain to engage in criminal and fraudulent activities. Respondent uses the subject domain name in the email address 'email@example.com' to contact victims on LinkedIn to offer purported job opportunities on behalf of Complainant."
After contacting job seekers, Respondent reportedly promises them a six-figure salary and generous fringe benefits. To accept this offer, the recipient must first make a payment to Respondent: "The Respondent lures victims with false promises of paying large monthly salaries and providing other benefits. Respondent then informs the victims that the victims must make some kind of advanced payment that the Respondent promises to reimburse at a later date when, in fact, the Respondent is merely engaged in an elaborate con."
Complainant argues that Respondent registered the disputed domain name in bad faith. Complainant had been in business for "more than 30 years" at the time Respondent registered the disputed domain name and at that point was listed by Forbesmagazine as the thirteenth largest company in the United States. This meant that "Respondent was undoubtedly aware of Complainant's prominence in the business world when it registered" the confusingly similar disputed domain name.
As for bad faith usage, Complainant points to Respondent's "criminal and fraudulent activities" towards job seekers. Although Respondent does not have an active website linked to the disputed domain name, Complainant argues this does not preclude a finding of bad faith usage: "Respondent has registered a domain name that prevents Complainant from registering a domain name that embodies the VALERO mark owned by Complainant. Panels have concluded 'lack of respondent's rights or legitimate interests in the domain name is undoubtedly indicative of registration in bad faith.'"
Complainant seeks the transfer of <thevalero.com> to its ownership.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
The UDRP sets three barriers that a complainant must overcome in the proceeding in order to win ownership of a disputed domain name:
First, that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
Second, that the respondent has no rights or legitimate interests in the disputed domain name; and
Third, that the disputed domain name has been registered and is being used in bad faith.
UDRP paragraph 4(a).
A. Identical or Confusingly Similar
Complainant undoubtedly has protectable rights in the VALERO mark. It has used the mark for many years in many countries in connection with many products and services and has obtained many trademark registrations. In addition, Complainant has sought to protect its mark from cybersquatters by filing numerous UDRP proceedings.
There is also no doubt that the disputed domain name, <thevalero.com>, is confusingly similar to Complainant's VALERO mark. The addition of the word "the" does not distinguish the disputed domain name from Complainant's mark. "The" is one of the least distinguished words in the English vocabulary. In this case, pairing "the" with another word does nothing to transform its partner. See NOVARTIS AG v. David Sparkowich, WIPO Case No. D2013-1610 ("It has been held by previous Panels that the addition of a generic term does not limit the risk of confusion between a complainant's trademark and a disputed domain name").
Complainant has surmounted the first barrier set forth in the UDRP.
B. Rights or Legitimate Interests
The UDRP sets forth several non-exclusive methods by which a respondent may prove it has rights or legitimate interests in a domain name. Respondent did not deign to respond to the Complaint and so we are left with Complainant's uncontested assertions that 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. According to the Complaint, Complainant has not granted any license to Respondent to use Complainant's mark.
The Panel notes that Respondent has hidden his true name and identity by using a proxy service and by providing the Registrar with a name and address identical to Complainant's name and address. The Panel further notes that Respondent has used the confusingly similar disputed domain name to falsely claim to be one of the Complainant's employees. Respondent has done this by creating an email address based on the disputed domain name (firstname.lastname@example.org) and soliciting money from job applicants.
Using Complainant's registered trademark to scam the desperate and gullible does not establish rights or legitimate interests in the disputed domain name. See Valero Energy Corporation and Valero Marketing and Supply Company v. Desmond c Cole, icapital, WIPO Case No. D2015-1444 ("The only active use that Respondent has made of the Disputed Domain Name was in a scheme to advertise fraudulent job offers purporting to come from the Complainants. These uses do not give rise to rights or legitimate interests on the part of the Respondent").
Complainant has cleared the UDRP's second barrier.
C. Registered and Used in Bad Faith
Complainant may not be the biggest cowboy in Texas, but it casts a large shadow in San Antonio – and has done so for several decades. When Respondent registered the disputed domain name in April 2016, Respondent was undoubtedly aware of Complainant and did as much as possible to hide its real identity and make consumers believe it was the Complainant. That is why Respondent called itself the "Valero Energy" company, registered a confusingly similar domain name, and listed its address as being on "Valero Road" in San Antonio, Texas. These facts demonstrate that Respondent registered the disputed domain name in bad faith.
Having deliberately taken these steps, Respondent then used the disputed domain name to create an email address (email@example.com) and began a campaign to prey upon job seekers. Respondent offered these people rich and rewarding careers – if only they would first send some of their money to Respondent.
The fact that the disputed domain name does not resolve to an active website is immaterial. Numerous UDRP decisions have found that the use of emails associated with a disputed domain name for fraudulent purposes satisfies the bad faith use requirement under the Policy. Likewise, this Panel finds that the disputed domain name is being used in bad faith.
Complainant has overcome the UDRP's third and final barrier.
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 <thevalero.com> be transferred to Complainant
Steven L. Snyder
Date: July 5, 2016