WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Valero Energy Corporation, Valero Marketing and Supply Company v. Adda Abang
Case No. D2021-0036
1. The Parties
The Complainant is Valero Energy Corporation, Valero Marketing and Supply Company, United States of America (“United States”), represented by Fasthoff Law Firm PLLC, United States.
The Respondent is Adda Abang, Nigeria.
2. The Domain Name and Registrar
The disputed domain name <leroenergy.com> (the “Domain Name”) is registered with OwnRegistrar, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 6, 2021. On January 7, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 12, 2021, 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 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 16, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 17, 2021.
The Center appointed Ian Lowe as the sole panelist in this matter on March 1, 2021. 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 Valero Marketing and Supply Company is a subsidiary of the Complainant Valero Energy Corporation. For ease of reference, they shall together be referred to as the Complainant. According to its website at “www.valero.com” (the “Complainant’s Website”), the Complainant is based in San Antonio, Texas, United States and was founded in 1990. It claims to be the largest independent petroleum refiner in the world and the largest renewable fuels producer in the United States. It has carried on business under the VALERO mark for over 30 years. The Complainant is the registered proprietor of a number of United States trademarks comprising VALERO including number 1314004 for the word mark VALERO registered on January 8, 1985. It promotes its business through the Complainant’s website and uses the domain name <valero.com> for company email addresses through which it communicates internally; with customers; with vendors; and with the public in general.
The Domain Name was registered on November 14, 2020. It does not now resolve, and does not appear ever to have resolved, to an active website. According to the evidence produced by the Complainant, the Domain Name has been used to configure email servers at the domain name and to send (and presumably receive) emails, purporting to be sent by “Valero Energy” using email addresses in the form “[…]@va.leroenergy.com”. In particular, the evidence indicates that the Respondent has fraudulently advertised fake employment positions on the jobs website at “www.buscojobs.com”, using an email address in the form “[…]@va.leroenergy.com” and incorporating the name of the Chief Executive Officer of the Complainant. In that way the Respondent has solicited personal information from putative job applicants.
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to its VALERO trademark (the “Mark”), that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Respondent registered and is using the Domain Name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
For this Complaint to succeed in relation to the Domain Name the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has uncontested rights in the Mark, both by virtue of its trademark registrations and as a result of the goodwill and reputation acquired through its use of the Mark over many years. Ignoring the generic Top-Level Domain (“gTLD”) “.com”, the Domain Name comprises the last four of the six letters of the Mark (two of the three syllables), together with the word “energy”. In addition, the Respondent has used the Domain Name together with the subdomain “va” which, in combination with the Domain Name, reads as “va.leroenergy.com”. In the view of the Panel, “lero” was clearly selected by the Respondent because it was considered to be similar to “valero” and the Panel finds that it is so similar. The Panel also considers, moreover, that in assessing the confusing similarity between the Mark and the Domain Name, it is permissible to take into account the obvious inference that the Respondent always intended to use, and has used, the Domain Name with the subdomain “va” in order to capitalize on the confusing similarity between the Domain Name as used by the Respondent and the Mark. The Panel does not consider that the addition of the word “energy”, a reference to the business of the Complainant, prevents a finding of confusing similarity.
Accordingly, the Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has made out a strong prima facie case that the Respondent could have no rights or legitimate interests in respect of the Domain Name. The Respondent has used the Domain Name not in connection with a bona fide offering of goods or services, but to configure email servers at the domain to send and receive emails impersonating employees of the Complainant for fraudulent purposes. The Respondent has chosen not to respond to the Complaint or to take any steps to counter the prima facie case established by the Complainant.
In the circumstances, the Panel finds that the Respondent does not have any rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
Since the Respondent has used the Domain Name for the purposes described above, the Panel is in no doubt that the Respondent had the Complainant and its rights in the Mark in mind when it registered the Domain Name. In the Panel’s view, the use of a domain name to set up email addresses impersonating those of employees of the Complainant, clearly with a view to fraudulent gain, amounts to paradigm bad faith registration and use for the purposes of the Policy. The fact that no website has been activated at the Domain Name does not obviate a finding of bad faith use.
Accordingly, the Panel finds that the Domain Name has been registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <leroenergy.com> be transferred to the Complainant.
Date: March 10, 2021