WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Valero Energy Corporation and Valero Marketing and Supply Company v. Lacey Larsen
Case No. D2018-1875
1. The Parties
The Complainants are 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 (collectively referred to as “the Complainant”), represented by Fasthoff Law Firm PLLC, United States.
The Respondent is Lacey Larsen of Wolcott, New York, United States.
2. The Domain Name and Registrar
The disputed domain name <valero.vip> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 16, 2018. On August 17, 2018, 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 disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on August 24, 2018.
The Center verified that the Complaint together with the amended 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 August 30, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 19, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 20, 2018.
The Center appointed William F. Hamilton as the sole panelist in this matter on October 5, 2018. 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 Complainant has sold a variety of oil, gasoline, and related products and retail services for over 30 years. The Complainant owns numerous registrations with the United States Patent and Trademark Office for the mark VALERO (the “Mark”) in various product categories with the original registration dating back to January 8, 1985 (registration number 1,314,004). The Complainant “has spent tens of millions of dollars advertising, marketing, and promoting” its products and services under the Mark. The Complainant owns and operates the domain name <www.valero.com>. See e.g. Valero Energy Corporation and Valero Marketing and Supply Company v. David Wayne, WIPO Case No. D2016-1461.
The disputed domain name was registered on August 8, 2018, and according to the evidence provided by the Complainant, it has resolved to a parking page with pay-per-click (“PPC”) links. The Complainant’s evidence also shows that the disputed domain name has been used in connection with a fraudulent email scheme.
5. Parties’ Contentions
The Complainant asserts the disputed domain name is identical or confusingly similar to the Mark because the disputed domain name is comprised the entirety of the Mark and the generic Top-Level Domain (“gTLD”) “.vip”, which is immaterial for determining whether a disputed domain name is identical or confusingly similar to a complainant’s mark. The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name or the Mark because the Respondent has never conducted any bona fide business utilizing the disputed domain name or the Mark. Finally, the Complainant asserts that the disputed domain name was registered and is being in bad faith to facilitate a criminal scheme and to confuse and divert unsuspecting Internet users to the Respondent’s website which features a series of PPC links to products and services purportedly offered by the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds the disputed domain name is identical or confusingly similar to the Complainant’s Mark. The disputed domain name is composed of the Mark and the gTLD “.vip". The gTLD in a domain name, in this case “.vip”, is a standard registration requirement and as such is disregarded under the confusing similarity test. Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275; Société Nationale des Chemins de Fer Français, SNCF v. TransureEnterprise Ltd / Above.com Domain Privacy, WIPO Case No. D2011-0447.
The Complainant has met its burden of proof under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel finds that the Respondent has no rights or legitimate interests in the Mark or the disputed domain name. The Complainant has specifically disavowed licensing the Mark to the Respondent or authorizing the Respondent to use the Mark or the disputed domain name. There is no evidence that the Respondent has ever conducted any bona fide business under the Mark or the disputed domain name. The Respondent has failed to respond to the Complainant. Nu Mark LLC v. Perfect Privacy, LLC / Kyle Messier, Apex Juice, WIPO Case No. D2018-1082; World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe, WIPO Case No. D2008-0642. Evidently, the use of the disputed domain name in connection with a fraudulent email scheme cannot give rise to any rights or legitimate interests on the part of the Respondent.
The Complainant has met its burden of proof under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds the disputed domain was registered and used in bad faith. From the evidence provided by the Complainant and unrebutted by the Respondent, it appears that the Respondent has used email addresses associated with the disputed domain name to trick companies into sending the Respondent money under the misapprehension that the email recipient was dealing with the Complainant. NCI Group, Inc. v. Natasha Godinese, WIPO Case No. D2015-0145.
Further, it is inconceivable that the Respondent innocently composed the disputed domain name, which is composed only by the Mark and gTLD “.vip”, without knowledge of the Complainant’s business operations and products. Indeed, the various links on the web page the disputed domain resolves to feature PPC links to services and products which appear to be offered by the Complainant. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (only feasible explanation for registration of the disputed domain name is intention to cause confusion, mistake and deception).
The Complainant has met its burden of proof under 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.vip> be transferred to the Complainant.
William F. Hamilton
Date: October 18, 2018