WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Valero Energy Corporation, Valero Marketing and Supply Company v. Domain Administrator, PrivacyGuardian.org / Ken Moses, Kenken
Case No. D2018-2386
1. The Parties
The 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.
The Respondent is Domain Administrator, PrivacyGuardian.org of Phoenix, Arizona, United States / Ken Moses, Kenken of Benin City, Edo, Nigeria.
2. The Domain Name and Registrar
The disputed domain name <valeroenergycompany.com> is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 18, 2018. On October 19, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 19, 2018, 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 the Complainant on November 22, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 22, 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 October 26, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 15, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 16, 2018.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on November 26, 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.
By an email from the Complainant’s representative dated November 1, 2018, the Complainant sought to introduce additional evidence as to the Respondent’s activities. The Panel has considered this but takes the view that in order to determine the Complaint it is unnecessary to take into account the additional evidence and it does not do so.
4. Factual Background
According to the Complainant, it has used the mark VALERO in commerce for at least 31 years and in particular US registration 1,314,004 registered in January 1985 in class 42 for inter alia oil and gas exploration services.
During this time the Complainant has spent tens of millions of US dollars advertising, marketing and promoting the mark and brand in the United States and throughout the world. As a result of this promotion the mark VALERO has developed extensive goodwill and favourable consumer recognition.
A schedule setting out 9 US marks VALERO is set out in the Complaint and certificates of registration are exhibited at Annex 4.
In addition, for many years, the Complainant has continuously owned and operated a website under the domain name <valero.com>.
Other panels have considered the Complainant’s rights in marks incorporating VALERO and determined, in ten previous decisions cited in the Complaint, the Complainant has rights in those marks.
The disputed domain name was registered on October 5, 2018 and resolves to a parked landing page containing a link on which it solicits offers to purchase the disputed domain name.
In the absence of a Response and contrary evidence, the Panel proceeds to determine the Complaint on the basis of the above evidence which it finds to be true.
5. Parties’ Contentions
1.The Complainant has rights in the mark VALERO.
2. The domain in dispute is confusingly similar to the mark VALERO.
3. There is no evidence that the Respondent has rights or legitimate interests in the disputed domain name.
4. On the evidence, the Respondent registered and has used the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Having considered the evidence of the Complainant’s rights in the mark VALERO set out in section 4 above the Panel finds that the Complainant has rights in the mark VALERO.
The disputed domain name consists of a combination of the mark VALERO with the generic words “energy” and “company”, which are descriptive of part of the Complainant’s activities.
It is well established that the use of the generic TLD “.com” can be disregarded for the purposes of establishing confusing similarity.
The Panel therefore finds that the disputed domain name is confusingly similar to the mark VALERO in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant points out that there is no evidence that the Respondent has ever been commonly known by the disputed domain name and is not making a legitimate noncommercial or fair use of the name. The Complainant has not licensed or authorized use of the disputed domain name.
To the contrary, there is evidence set out at Annex 5 to the Complaint that the Respondent is engaged in a “scam” utilizing a job recruitment scheme which is accessed by way of the disputed domain name.
Moreover, the disputed domain name resolves to a parking page where it is not being used for any purpose save that it contains a link on which it offers to purchase the disputed domain name.
There is no evidence to the contrary given the absence of a Response. In these circumstances, the Panel accepts the Complainant’s submissions and finds for the Complainant in respect of this element.
C. Registered and Used in Bad Faith
The Complainant submits that given its prominence as the 37th largest US company the Respondent must have been aware of this when it registered the disputed domain name incorporating the trade mark VALERO. The Panel notes the combination of VALERO together with the word “energy”, which is part of the Complainant’s business activity and which trades as Valero Energy Corporation, further suggests an awareness of the Complainant and its business activities.
The Complainant relies upon the evidence of a “scam”, referred to in section 6B above, which it describes as “criminal conduct”.
It also relies upon the provision of false contact information to the Registrar as an attempt to conceal its identity.
Taking all of these factors and the absence of evidence to the contrary, the Panel finds “bad faith” on the part of the Respondent and finds for the Complainant in respect of this element.
For the foregoing reasons, in accordance with paragraph 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <valeroenergycompany.com> be transferred to the Complainant.
Clive Duncan Thorne
Date: December 3, 2018