WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Valero Energy Corporation and Valero Marketing and Supply Company v. Rodney Ballard
Case No. D2017-0086
1. The Parties
The Complainants are Valero Energy Corporation and Valero Marketing and Supply Company of San Antonio, Texas, United States of America (“United States” or “US”), represented by Fasthoff Law Firm PLLC, United States.
The Respondent is Rodney Ballard of Jersey City, New Jersey, United States.
2. The Domain Name and Registrar
The disputed domain name <valerooil.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 January 17, 2017. On January 18, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 19, 2017, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 26, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 15, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 16, 2017.
The Center appointed Richard G. Lyon as the sole panelist in this matter on March 6, 2017. The Panel finds that it was properly constituted and has jurisdiction to decide this administrative proceeding. The Panel has submitted his 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 and their affiliated companies are a major international oil group, headquartered in Texas (US) that holds a number of trademarks for VALERO, duly registered on the principal record of the United States Patent & Trademark Office (USPTO). The earliest of these submitted with the Complaint was issued in 1985. The Complainants’ principal website is “www.valero.com”.
The Respondent registered the disputed domain name in May 2016. Both the Center and the Panel were unable to access the disputed domain name, with attempted access timing out. A screenshot submitted with the Complaint indicates that when the Complainant attempted access, it received a “server not found” error message.
5. Parties’ Contentions
The Complainants contend that the disputed domain name is confusingly similar to the Complainants’ USPTO-registered VALERO marks; that the Respondent lacks rights or legitimate interests in the disputed domain name; that the Respondent’s use is not bona fide; and that the Respondent registered and used the disputed domain name in bad faith. According to the Complaint the Respondent used the disputed domain name in connection with “an elaborate, criminal scheme utilizing a Nigerian/419 advanced fee scam,” attempting to persuade third parties to pay him in advance for crude oil shipments that were non-existent or unrelated to the Respondent and in any event not related to the Complainants. The Complainants submit sample documents forwarded to them by an intended victim of the scheme. These documents are voluminous, among them insurance certificates, information on the vessel on which the oil was to be transported, bills of lading, financial and banking information, wiring instructions. A number of them include reference to email addresses at the disputed domain name and also at <valeropetroleum.org>, which was the subject of Valero Energy Corporation and Valero Marketing and Supply Company v. Valero Energy, WIPO Case No. D2017-0075.
The Complainant cites two additional bases for finding bad faith: the “warehousing” doctrine first articulated in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; and that “the Respondent has registered a domain name that prevents Complainant from registering a domain name that embodies the VALERO® mark owned by Complainant.”
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
Before analyzing the Complaint under the three elements of paragraph 4(a) of the Policy, the Panel notes that, unlike civil litigation in the United States, the Respondent’s default does not constitute an admission of any matter alleged in the Complaint or automatically result in a decision in the Complainant’s favor.
A. Identical or Confusingly Similar
The Complainants have met their burden of proof under paragraph 4(a) of the Policy.
The disputed domain name’s dominant feature, VALERO, is identical to the Complainants’ USPTO-registered trademarks. Adding the word “oil” only makes confusion more likely.
B. Rights or Legitimate Interests
Having made its prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to demonstrate the contrary. See WIPO - of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO - 2.0”), paragraph 2.1. The Respondent has not submitted a response and the Panel can find no indication of any bona fide use of the disputed domain name. It appears that the disputed domain name has not been used at all for an active website, but only for the purpose of sending emails purporting to be from an officer of the Complainants, as discussed below.
C. Registered and Used in Bad Faith
The Complainants correctly argue that use of the disputed domain name for a scam demonstrates bad faith registration and use for Policy purposes. See, e.g., Terex Corporation v. Williams Sid, Partners Associate, WIPO Case No. D2014-1742. Here the alleged scam is amply documented, and the use of the disputed domain name (and <valeropetroleum.org>) in email addresses from a purported officer of the Complainants plain. Nothing in the Policy requires that bad faith use be done on a website and this Panel sees no reason to impose such a limitation. The selection of a domain name with the Complainants’ marks, distinctive and well-known in the energy world, as its dominant feature, betrays both knowledge of the Complainants and their marks and the requisite intention to take advantage of those marks’ value. This brings this case within the example of evidence of bad faith in paragraph 4(b)(iv) of the Policy, that “by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [his] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [his] web site or location or of a product or service on [his] web site or location.”
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 <valerooil.com> be transferred to the Complainants.
Richard G. Lyon
Date: March 15, 2017