WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Valero Energy Corporation, Valero Marketing and Supply Company v. Redacted for Privacy, WhosiGuard Inc./ David Killam, Killam Companies
Case No. D2021-0911
1. The Parties
The Complainants are Valero Energy Corporation and Valero Marketing and Supply Company, United States of America (“United States” or “U.S.”), represented by Fasthoff Law Firm PLLC, United States. Valero Energy Corporation and Valero Marketing and Supply Company are individually and collectively referred to herein as “the Complainant”.
The Respondent is Redacted for Privacy, WhosiGuard Inc., Panama/ David Killam, Killam Companies, United States.
2. The Domain Name and Registrar
The disputed domain name <valeroenergycorporations.com> (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 25, 2021. On March 26, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 26, 2021, 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 March 29, 2021 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 March 29, 2021.
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 April 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 28, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 29, 2021.
The Center appointed Ellen B. Shankman as the sole panelist in this matter on May 6, 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 date of the Domain Name registration was confirmed by the Registrar to be March 11, 2021.
The Complainant owns U.S. Trademark Reg. Nos. 1,314,004, 2,560,091, 2,656,971, and 3,108,715 for the VALERO trademark, and U.S. Trademark Reg. Nos. 2,656,973, 2,927,757, 2,938,790, and 3,688,322 for the V VALERO and VALERO V marks, as well as other registrations embodying the VALERO mark (individually and collectively the “the Marks”). The Complainant commenced using the trademark VALERO in commerce for at least 31 years in connection with gas and energy goods and services, and predates the date of the Domain Name registration.
The Panel also conducted an independent search to determine that the Domain Name currently resolves to an error page.
5. Parties’ Contentions
The Complaint contends that the Complainant has spent tens of millions of dollars advertising, marketing, and promoting the VALERO brand under the Marks 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. As a result of the Complainant’s significant monetary investment and continuous use of the Marks to advertise, market and promote the VALERO brand over more than three decades, the Marks have developed extensive goodwill and favorable consumer recognition, in relation to, inter alia, oil and gas exploration production, processing and distribution services, retail store services featuring convenience store goods and services, automobile station services, car wash services and credit card services.
The Complainant further has continuously owned and operated an Internet website under the domain name <valero.com> for many years, and utilizes that domain name for company email addresses through which it communicates internally, with customers, vendors, and the public in general. The Complaint contends that the Marks are both distinctive and famous within the meaning of U.S. trademark law.
The Domain Name is confusingly similar to the Marks owned by the Complainant because it is comprised of the Complainant’s VALERO mark in its entirety, plus the word “energy” and the word “corporations,” along with the generic top-level domain (“gTLD”) extension, “.com”. The Respondent has no rights or legitimate interests in or to the Domain Name. The Respondent has never been commonly known by the domain name; has not used or made demonstrable preparations to use the Domain Name; and is not making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain. The Complainant has not licensed to the Respondent the right to use the VALERO mark, and the Respondent is not otherwise authorized to act on the Complainant’s behalf.
To the contrary, the Complainant contends that 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 wire money to the Respondent in connection with a job offer scam. Below is an email in which the Respondent poses as one of Valero’s employees. A copy of the job application form sent by the Respondent to the victim appears as follows:
Our office has received your resume CV from Shine.com relating to the direct employment going on in Valero Energy Inc. Oil and Gas Corporation in Canada . Due to you applying outside Canada, The management has decided to interview all international applicants through email. There is an attached Letter of Interview to this mail, which you need to read carefully and answer the questions correctly.
To proceed further you are required to provide the following details;
1. Answers to the interview questions
2. Educational qualifications Certificates scan copies
3. International passport. Scan copies front and back
4.Two colored photo size
You are requested to send a scan copy of your certificates as proof of educational qualification. Fill the forms with pen and return it to us as attach file by email. This form will be attended officially in our office by Valero Energy Inc. Corporation. Email id: email@example.com
@ Your experience can be considered in line with a number of vacant positions we currently need, Our HR senior officials shall review the entire filled Applications, Interview responses provided by all applicants and their educational qualification certificates.
JOB STATUS: Full-Time We also provide Accommodation and flight ticket to Canada for any Applicant applying outside Canada
WE ARE ALSO NOTIFYING YOU THAT EACH APPLICANT SELECTED WILL BEAR THEIR VISA CHARGES WHILE THE MANAGEMENT WILL BE RESPONSIBLE FOR ALL YOUR HOSPITALITY SUCH AS ACCOMMODATION IN OUR STAFF QUARTER, FEEDING, TAX, AND YOUR FLIGHT TICKET WHICH WILL BE BOOKED AS SOON AS ALL YOUR TRAVEL DOCUMENT WERE CONFIRMED COMPLETED FROM THE APPOINTED DIPLOMAT WE DIRECTED YOU TO MEET FOR THE PROCESSING.
Kindly return your answer script form within 72 hours. Proper self- introduction interviews will be conducted here in our office in Canada if selected to enable the Valero Energy Inc. Corporation management to know you better.”
The Complaint argues that the communication purports to contain the signature of any Valero employee, and all documents embodying the Complainant’s Marks, are fake documents that contain unauthorized, infringing uses of the Complainant’s Marks. In addition to the Respondent’s alleged fraudulent and criminal conduct, the Domain Name resolves to a dead page. The Complaint contends that the Respondent was aware of the Complainant’s prominence in the business world when it registered the Domain Name, and intentionally registered, for commercial gain, a domain that is comprised of the Complainant’s Marks, and that prevents the Complainant from registering a domain name that embodies its own mark – all in bad faith. Further, the Respondent has provided false contact information to the registrar in an attempt to conceal his or her true identity, both of which constitute bad faith under the UDRP.
To summarize the Complaint, the Complainant is the owner of registration for the trademark VALERO, in respect of energy related goods and services. The Domain Name is confusingly similar to the trademark owned by the Complainant. By registering the Domain Name that comprises the Complainant’s VALERO trademark in its entirety, with the addition of the terms “energy” and “corporations”, the Respondent has created a domain name that is confusingly similar to the Complainant’s trademark.
Further, the Respondent has utilized the Complainant’s Marks in fraudulent and criminal communications, and as such, the Respondent has demonstrated a knowledge of and familiarity with the Complainant’s brand and business. The addition of the descriptive terms does not prevent a finding of confusing similarity. Therefore, the Domain Name could be considered virtually identical and/or confusingly similar to the Complainant’s trademark. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent registered the Domain Name under a hidden identity which is also evidence of bad faith. The Respondent may be maliciously collecting user information which is evidence of bad faith. The Domain Name was registered and is being used in bad faith. Thus, the Respondent’s registration and use of the Domain Name constitutes bad faith registration and use under the Policy, and the Complainant requests transfer of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The burden for the Complainant under paragraph 4(a) of the Policy is to prove:
(i) That the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) That the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) That the Domain Name has been registered and used in bad faith
The Complainant must prove in this administrative proceeding that each of the aforementioned three elements is present in order to obtain the transfer of the Domain Name.
In accordance with paragraph 14(a) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint. Since the Respondent did not respond to this Complaint, the facts regarding the use and reputation of the Complainant’s mark are taken from the Complaint and are generally accepted as true in the circumstances of this case.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has satisfactorily proven that it has registered trademark rights for VALERO. This is consistent with the findings of other Panels, see e.g., Valero Energy Corporation v. Domain Admin, WIPO Case No. D2019-1708; Valero Energy Corporation v. David Wayne, WIPO Case No. D2016-1461.
Further, the Panel finds that the Domain Name integrates the Complainant‘s mark VALERO in its entirety with the addition of the elements “energy” and “corporations”, and that the Domain Name is confusingly similar to the Complainant’s trademark. Further, the Panel finds that the mere addition of such terms to the Domain Name does not change the overall impression of the designation as being connected to the trademark of the Complainant – and if anything, enhances it. It does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s trademark. See Pfizer Inc. v. Asia Ventures, Inc., WIPO Case No. D2005-0256; Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110.
Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Name is identical or confusingly similar to the Complainant’s registered trademark, under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often-impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name and that it is not related to or affiliated in any way with the Complainant, nor has the Complainant authorized the Respondent to use its trademarks.
Based on the available record as set out above, the Panel finds that the Complainant has established a prima facie case, which was not refuted, and that the Respondent lacks rights or legitimate interests in the Domain Name.
Therefore, the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Name, under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
By registering the Domain Name that comprises the Complainant’s VALERO trademark in its entirety, together with terms that are descriptive of the Complainant’s business, the Respondent has demonstrated a knowledge of and familiarity with Complainant’s brand and business. In light of the facts set forth within this Complaint, the Panel finds that it is “not possible to conceive of a plausible situation in which the Respondent would have been unaware of” the Complainant’s brand at the time the Domain Name was registered. See Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (WIPO Feb. 18, 2000). Further, “it defies common sense to believe that Respondent coincidentally selected the precise domain without any knowledge of Complainant and its trademarks.” See Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415 (WIPO Dec. 10, 2007). The Panel agrees with the Complainant’s contention that Indeed, Respondent’s purpose in registering the Domain Name was to capitalize on the reputation of Complainant’s trademark by diverting Internet users seeking information about the Complainant.
A respondent’s use of a complainant’s mark—for said respondent’s commercial benefit—to attract Internet users otherwise seeking said complainant evinces a finding of bad faith is also consistent with the Policy paragraph 4(b)(iv). See WIPO Overview 3.0 at section 3.1.4 (“Panels have moreover found the following types of evidence to support a finding that a respondent has registered a domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark: (i) actual confusion, (ii) seeking to cause confusion (including by technical means beyond the domain name itself) for the respondent’s commercial benefit, even if unsuccessful, (iii) the lack of a respondent’s own rights to or legitimate interests in a domain name, (iv) redirecting the domain name to a different respondent-owned website, even where such website contains a disclaimer, (v) redirecting the domain name to the complainant’s (or a competitor’s) website, and (vi) absence of any conceivable good faith use.”). These criteria apply in the present case, which supports that Panel’s finding that the Respondent registered and is using the Domain Name in bad faith.
The Panel is persuaded that the Respondent not only had actual or constructive knowledge of the Complainant’s trademarks and that registration of the Domain Name would be identical or confusingly similar to the Complainant’s trademarks, but that the use was intended to ride on the reputation of the Complainant. Evidence was provided that the Respondent deliberately attempted to impersonate the Complainant and sent malicious and fraudulent emails to third parties, thus confirming that there was not any legitimate use of this Domain Name. The Panel also agrees with the Complainant that by seeking to conceal his or her true identity in the registration of the Domain Name, this provides further evidence of the Respondent’s bad faith. The Panel finds that this is a classic example of the unfortunate fraudulent and opportunistic registration to create confusion that the UDRP is intended to address, and finds that the Respondent is using the Domain Name opportunistically to benefit financially from the Complainant’s trademark, in bad faith use and registration.
Given the evidence of the Complainant’s prior rights in the trademark, the timing of the registration of the Domain Name with apparent full knowledge of the Complainant by evidence of use of its trademarks in the website, and the use of the Domain Name to support opportunistic communications, the Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Names in bad faith, 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 Domain Name, <valeroenergycorporations.com> be transferred to the Complainant.
Ellen B Shankman
Date: May 20, 2021