WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Valero Energy Corporation, Valero Marketing and Supply Company v. Joe Mattews, Valero PLC
Case No. D2017-1856
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 of America.
The Respondent is Joe Mattews, Valero PLC of Tatworth, United Kingdom of Great Britain and Northern Ireland, self-represented.
2. The Domain Name and Registrar
The disputed domain name <valeroplc.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 September 23, 2017. On September 25, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 26, 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 September 27, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 17, 2017. The Respondent sent an email communication on October 4, 2017. On October 19, 2017, the Center notified the Parties that it would proceed to Panel Appointment.
The Center appointed Stefan Abel as the sole panelist in this matter on November 1, 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
The Complainants are two US-based companies which are affiliated one to another and which are active in the oil and gas industry. One of them is mentioned in the press and considered to be among the largest US companies in terms of assets and revenues.
Both Complainants own several registered US-trademarks representing the term VALERO, including US‑trademark No. 1,314,004 filed on August 1, 1983 and registered on January 8, 1985.
The term VALERO also represents the business name of both Complainants, along with descriptive elements. They have been active in their business for more than 30 years.
The Complainants operate their Internet website for many years under the domain name <valero.com> and use this domain name for company e-mail addresses through which they communicate, in particular, with the public in general.
The disputed domain name was registered on September 1, 2017. It resolves to a parking page advertising the Registrar's domain business.
Further, the Complainants received e-mails from different individuals enquiring about job offers the individuals received from the e-mail address "[…]@valeroplc.com" on behalf of one of the Complainants. These job offers, sent to non-US-residents mentioned fees to be reimbursed later on.
5. Parties' Contentions
The Complainants' contentions are as follows:
The Complainants have spent tens of millions of dollars advertising, marketing and promoting the Valero brand under the trademarks in the United States and throughout the world in a wide variety of media formats, including print, television, radio, Internet, billboards, and signage among others. Its trademarks are both distinctive and famous within the meaning US trademark law.
The disputed domain name is confusingly similar because it is comprised of the Complainants' VALERO mark in its entity, plus the generic term "plc" along with the generic Top-Level Domain ("gTLD") ".com".
The Respondent has no rights or legitimate interests in or to the <valeroplc.com> disputed domain name. The Complainants have not licensed to the Respondent the rights to use the VALERO mark, and the Respondent is not otherwise authorized to act on the Complainants' behalf. To the contrary, the Respondent is engaged in an elaborate, criminal scheme utilizing a Nigerian/419 advanced fee scam, in this case attempting to collect personal identifying information and to persuade victims to send money to Respondent in connection with a job offer scam.
The Respondent was undoubtedly aware of the Complainants prominence in the business world when it registered the subject domain. The Respondent intentionally registered, for commercial gain, a domain that is comprised of the Complainants' trademark. In addition to the fraudulent conduct and non-use of the domain for a website, the Respondent, by having registered the domain name, prevents the Complainants form registering a domain that reflects the VALERO mark owned by the Complainants, which is evidence of bad faith, too.
The Respondent did not reply to the Complainant's contentions but, in its email communication of October 4, 2017, only asked the Center to explain what exactly the Center wants the Respondent to provide and to state the required information. The Center replied by referencing the Notification of Complaint and Commencement of Administrative Proceeding document submitted to the Respondent before, advised about the due date for the response and sent a link for additional information about the UDRP. There was no further response by the Respondent.
6. Discussion and Findings
The Policy provides for a transfer or cancellation of the disputed domain name if the Complainants establish each of the following elements set out in paragraph 4(a) of the Policy:
(i) the Respondent's disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out certain circumstances which, in particular, but without limitation, shall be evidence of registration and use of the domain name in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainants' registered trademarks VALERO.
The disputed domain name consists of this distinctive trademark in combination with the term "plc". The Panel finds that "plc", when preceded by the Complainant's trademark, is perceived by the public as an abbreviation for "public limited company". The letters "plc" added to the element "valero" in the disputed domain name therefore do not add any distinctive character with regard to the mark owned by the Complainants.
Similarly, the gTLD ".com" does not affect the finding of confusing similarity. gTLDs are in general not considered as an identifier of the website as to its owner or its operator. Reasons for a possible exception to this rule, such as the inclusion of the gTLD by the disputed Second-Level domain name to form a conceptual whole, are not apparent.
The Panel finds that paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
There is no indication that the Respondent is licensed or otherwise authorized by the Complainant to use its registered trademark or to register the disputed domain name.
The disputed domain name does not have any apparent generic or descriptive meaning and the term "Valero" is not used as a designation for a person or a company other than the Complainants or for services or products other than those provided by the Complainants.
Rather, the Respondent apparently uses the disputed domain name in a fraudulent manner. The disputed domain name is not actively used and resolves to a parking site only, whereas job offers are being sent allegedly on behalf of employees of one of the Complainant to different individuals from the email address "[…]@valeroplc.com". This allegation made in the e-mails appears to be false, not only because there is no corresponding content under the domain name <valeroplc.com> but, in particular, because the "job offer" contains two facsimile signatures that are apparently not the signatures of the persons they are alleged to be, as the facsimile signatures contain readable letters that do not correspond at all with the letters of the name of the allegedly signing person placed in printed letters below the signatures. In any event, the Complainants confirm that these emails have not been signed by the respective employees.
The Panel therefore finds the Respondent has no rights or legitimate interests in the disputed domain name and that the second element of paragraph 4(a) of the Policy is also met.
C. Registered and Used in Bad Faith
The Panel finds that the Complainants have established the element of paragraph 4(a)(iii) of the Policy for the following reasons:
The term "Valero" is not descriptive in the language of the country where the Respondent is located (English).
The non-descriptive part of the Complainants' company name and its trademarks VALERO are well known, at least in the US.
The Complainants have used the sign VALERO as their business identifier for many years before the disputed domain name has been registered. In particular, the Complainants operate an Internet website under the domain name <valero.com> for many years and utilize that domain name for company email addresses through which they communicate with customers, vendors and the public in general.
The disputed domain name is identical to the Complainants' business name, trademarks and domain name <valero.com>; the only difference is the term "plc" added to "valero", which may easily be understood as identifying the legal type of the company (i.e. public limited company).
The Respondent does not make any use of the disputed domain name for a particular business; there is only a parking site accessible under the disputed domain name.
Instead, the Respondent sends emails to individuals suggesting job offers in the name of one of the Complainants using the email address consisting of the disputed domain name and the term "careers" placed before the @-symbol, containing falsified signatures, asking for personal information and mentioning the necessity to pay fees in the course of the hiring proceeding.
The Panel therefore finds that the disputed domain name has been registered and is being used only to enable the Respondent to mislead individuals into believing they have received a job offer from one of the Complainants, make them send personal data and collect money eventually. There are no factual circumstances apparent or conceivable to the Panel indicating a different purpose of the disputed domain name registration.
Such fraudulent behavior connected to the registration of the disputed domain name shows that the disputed domain name has been registered and is being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy. It is not necessary that one of the cases mentioned under paragraphs 4(b)(i) to (iv) be present; these are just examples for the finding of bad faith as set out in paragraph 4(b) 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, <valeroplc.com> be transferred to the Complainant.
Date: November 20, 2017