WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Valero Energy Corporation and Valero Marketing and Supply Company v. Mark Thiessen, Oils and Co.
Case No. D2016-2363
1. The Parties
Complainant is Valero Energy Corporation of San Antonio, Texas, United States of America ("United States") and Valero Marketing and Supply Company of San Antonio, Texas, United States represented by Fasthoff Law Firm PLLC, United States.
Respondent is Mark Thiessen, Oils and Co. of New York, New York, United States.
2. The Domain Name and Registrar
The disputed domain name <valero-corporation.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 November 21, 2016. On November 22, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 23, 2016, the Registrar transmitted by email to the Center its verification response confirming that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 2, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 22, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on December 23, 2016.
The Center appointed Lorelei Ritchie as the sole panelist in this matter on January 3, 2017. 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
Complainant, consisting together of a parent and its wholly-owned subsidiary corporation, own trademarks for the mark VALERO in the United States, where Respondent lists his address of record, for, among other things, oil and gas exploration services; credit card services; retail store services featuring convenience store items; convenience store services; automobile service stations services and car wash services. Some of these registrations include United States Patent and Trademark Office ("USPTO") Registration No. 1,314,004 (Registered on January 8, 1985); U.S. Registration No. 2,560,091 (Registered on April 9, 2002); 2,656,971 (Registered on December 3, 2002); and 4,216,650 (Registered on October 2, 2012).
Complainant also owns the registration for the domain name <valero.com> which it uses to connect to a URL from which it refers users to information about its services. Complainant was listed in Fortune 500 as the 13th largest company in the United States in 2015, and the 32nd largest in 2016.
The disputed domain name <valero-corporation.com> was registered on September 28, 2016. Respondent was not using the disputed domain name to resolve to an active website at the time of the filing of the Complaint. However, Respondent has used email addresses associated with the disputed domain name to send messages to recipients, referring to himself as "[…]/Process Engineer" and referencing Complainant and its marks. Respondent has no affiliation with Complainant, nor any license to use its marks.
5. Parties' Contentions
Complainant contends that (i) <valero-corporation.com> is identical or confusingly similar to Complainant's trademarks, (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) Respondent registered and is using the disputed domain name in bad faith.
Specifically, Complainant contends that it is the owner of the VALERO mark, which Respondent has incorporated in full in the disputed domain name and merely added the descriptive term "corporation". Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name. Complainant contends that Respondent has registered and is using the disputed domain name in bad faith, by posing as an employee of Complainant, and sending emails, using the disputed domain name, with Complainant's mark, to lure email recipients into making deals with Respondent on the sales of automobiles, which is a similar service to that offered by Complainant.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
This Panel must first determine whether <valero-corporation.com> is identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that it is. The disputed domain name incorporates in full Complainant's registered mark, VALERO, and combines it with the term "corporation" which is descriptive of a business entity, and would be a would be perceived by Internet users as referring to a website where they could find information about Complainant's VALERO corporation.
Numerous UDRP panels have agreed that supplementing or modifying a trademark with generic or descriptive words does not make a domain name any less "identical or confusingly similar" for purposes of satisfying this first prong of paragraph (4)(a)(i) of the Policy. See, for example, Microsoft Corporation v. Step Web, WIPO Case No. D2000-1500 (transferring <microsofthome.com>); Wal-Mart Stores, Inc. v. Horoshiy, Inc., WIPO Case No. D2004-0620 (transferring <walmartbenfits.com>); General Electric Company v. Recruiters, WIPO Case No. D2007-0584 (transferring <ge-recruiting.com>).
The Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph (4)(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel next considers whether Complainant has shown that Respondent has no "rights or legitimate interest" as must be proven to succeed in a UDRP dispute. Paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name "in connection with a bona fide offering of goods or services"; (ii) demonstration that respondent has been "commonly known by the domain name"; or (iii) "legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue".
No evidence has been presented to this Panel that might support a claim of Respondent's rights or legitimate interests in the disputed domain name, and Respondent has no license from, or other affiliation with, Complainant.
Therefore, this Panel finds that Complainant has provided sufficient evidence of Respondent's lack of "rights or legitimate interests" in accordance with paragraph 4(a)(ii) of the Policy which Respondent has not rebutted.
C. Registered and Used in Bad Faith
There are several ways that a complainant can demonstrate that domain names were registered and used in bad faith. For example, paragraph (4)(b)(iv) of the Policy states that bad faith can be shown where "by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent's] web site or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [respondent's] website or location or of a product or service on [the] web site or location". As noted in Section 4 of this Panel's decision, Respondent has used an email address associated with the disputed domain names to lure Internet users by offering automobile sales, whereas Complainant offers other services related to automobiles. Thus, in so doing, Respondent is trading on the goodwill of Complainant's trademarks to attract Internet users, presumably for Respondent's own commercial gain.
Given the overall circumstances, the Panel finds that Respondent was undoubtedly aware of Complainant's rights when registering and using the disputed domain name. Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith in accordance with paragraph (4)(a)(iii) 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, <valero-corporation.com>, be transferred to Complainant.
Date: January 5, 2017