WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Valero Energy Corporation and Valero Marketing and Supply Company v. Domain Admin, Privacy Protect LLC (PrivacyProtect.org) / Kevin Michael Adams
Case No. D2021-0943
1. The Parties
Complainants are Valero Energy Corporation and Valero Marketing and Supply Company, both from the United States of America (“United States”), represented by Fasthoff Law Firm PLLC, United States.
Respondent is Domain Admin, Privacy Protect LLC (PrivacyProtect.org), United States / Kevin Michael Adams, United States.
2. The Domain Name and Registrar
The disputed domain name <valero-careers.com> (the “Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 29, 2021. On March 30, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain name. On March 31, 2021, the Registrar transmitted by email to the Center its verification disclosing registrant and contact information for the Domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on April 6, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on April 9, 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 Respondent of the Complaint, and the proceedings commenced on April 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 2, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 6, 2021.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on May 18, 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
Complainants are Valero Energy Corporation, headquartered in San Antonio, Texas, United States, and Valero Marketing and Supply Company, a wholly owned subsidiary of Valero Energy Corporation (Valero Energy Corporation and Valero Energy Corporation will be referred to as “Complainant”). Complainant operates in the field of oil and gas exploration, production, processing, and distribution services. In 2019, Complainant was listed as the 32th largest company in the United States according to Fortune magazine.
Complainant owns United States Trademark Reg. Nos. 1,314,004 (registered January 8, 1985), 2,656,971 (registered December 3, 2002), and 3,108,715 (registered June 27, 2006) for the VALERO mark (or the “Mark”). Complainant has continuously used the VALERO mark in commerce for at least 31 years. During this time, Complainant has spent tens of millions of dollars advertising, marketing, and promoting the Mark worldwide in a wide variety of media formats, including print, television, radio, Internet, billboards, and signage, among others. 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.
Respondent registered the Domain Name on March 19, 2021. At the time of filing of the Complaint, the Domain Name resolved to a holding page with advertising links. At the time of the Decision, the Domain Name resolved to an error page.
5. Parties’ Contentions
Complainant contends that (i) the Domain Name is identical and confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the Domain Name; and (iii) Respondent registered and is using the Domain Name in bad faith.
In particular, Complainant contends that it has trademark registrations for the VALERO marks and owns a domain name incorporating the VALERO mark. Complainant contends that Respondent registered and is using the Domain Name, to confuse Internet users looking for bona fide and well-known VALERO products and services. Complainant claims that Respondent is engaged in a criminal scheme to collect personal data, as Respondent used the Domain Name to send emails posing as a senior recruiter of the Complainant.
Complainant notes that it has no affiliation with Respondent, nor authorized Respondent to register or use a domain name, which includes Complainant’s mark, and that Respondent has no rights or legitimate interests in the registration and use of the Domain Name. Rather, Complainant contends that Respondent has acted in bad faith in acquiring and setting up the Domain Name, when Respondent clearly knew of Complainant’s rights.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name was registered and is being used in bad faith.
Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states:
“Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding?
Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed: a respondent’s default is not necessarily an admission that the complainant’s claims are true.”
Thus, although in this case, Respondent has failed to respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.
A. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See WIPO Overview 3.0, section 1.2.1. Complainant provided evidence of its rights in the VALERO marks, which have been registered since at least as early as 1985, well before Respondent registered the Domain Name on March 19, 2021 as noted above. Complainant has also submitted evidence, which supports that VALERO is a widely known trademark and a distinctive identifier of Complainant’s products and services. Complainant has therefore proven that it has the requisite rights in the VALERO marks.
With Complainant’s rights in the VALERO marks established, the remaining question under the first element of the Policy is whether the Domain Name, typically disregarding the Top-Level Domain (“TLD”) in which it is registered (in this case, “.com”), is identical or confusingly similar to Complainant’s mark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842.
Here, the Domain Name is confusingly similar to Complainant’s VALERO marks. These marks, which are fanciful and inherently distinctive, are recognizable in the Domain Name. The complete incorporation of the VALERO mark and the voluntary addition of a hyphen “-“, followed by the generic term “careers” in the Domain Name <valero-careers.com> does not prevent a finding of confusing similarity between Complainant’s trademarks and the Domain Name registered by Respondent.
Thus, the Panel finds that Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, a complainant must make at least a prima facie showing that a respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once a complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
From the record in this case, it is evident that Respondent was, and is, aware of Complainant and the VALERO marks, and does not have any rights or legitimate interests in the Domain Name. Complainant has confirmed that Respondent is not affiliated with Complainant, or otherwise authorized or licensed to use the VALERO trademarks or to seek registration of any domain name incorporating the trademarks. Respondent is also not known to be associated with or commonly known by the VALERO marks.
In addition, Respondent has not used the Domain Name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the evidence demonstrates that at the time of the filing of the Complaint, the Domain Name resolved to a holding page with advertising links. At the time of the Decision, the Domain Name resolved to an error page. Such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use and cannot under the circumstances confer on Respondent any rights or legitimate interests in the Domain Name. See, e.g., Intesa Sanpaolo S.p.A. v. Charles Duke / Oneandone Private Registration, WIPO Case No. D2013-0875. Moreover, there is no evidence showing that Respondent has been commonly known by the Domain Name.
Accordingly, Complainant has provided evidence supporting its prima facie claim that Respondent lacks any rights or legitimate interests in the Domain Name. Respondent has failed to produce countervailing evidence of any rights or legitimate interests in the Domain Name. Thus, the Panel concludes that Respondent does not have any rights or legitimate interests in the Domain Name and Complainant has met its burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that Respondent’s actions indicate that Respondent registered and is using the Domain Name in bad faith.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The Panel finds that Complainant provided ample evidence to show that registration and use of the VALERO marks long predate the registration of the Domain Name by Respondent. Complainant is also well established and known. Indeed, the record shows that Complainant’s VALERO marks and related services are widely known and recognized. Further, the Domain Name not only incorporates Complainant’s VALERO mark in its entirety, it also incorporates an intentional addition of a hyphen “-“ and the generic term “careers” in the Domain Name <valero-careers.com>, which suggests Respondent’s actual knowledge of Complainant’s rights in the VALERO mark at the time of registration of the Domain Name and its effort to opportunistically capitalize on the registration and use of the Domain Name.
The Panel therefore finds that Respondent’s awareness of Complainant’s trademark rights at the time of registration suggests bad faith. See Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz, WIPO Case No. D2011-2209; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070; BellSouth Intellectual Property Corporation v. Serena, Axel, WIPO Case No. D2006-0007).
Moreover, Respondent registered and is using the Domain Name to confuse and mislead consumers looking for bona fide and well-known VALERO products and services of Complainant or authorized partners of Complainant. The use of the VALERO mark as the dominant part of the Domain Name is intended to capture Internet traffic from Internet users who are looking for Complainant’s products and services. Such use and association of the Domain Name to divert users to advertising links could result in causing confusion with Complainant’s business and activities. It may confuse Internet users who are looking for Complainant’s legitimate website and deceive Internet users into thinking that Respondent is somehow connected to Complainant, which is not the case.
Complainant has also provided evidence that Respondent is engaged in an elaborate scheme, in this case attempting to collect personal identifying information, and to mislead and defraud victims with a job offer scam. In particular, Complainant provided an email exchange, using the <valero-careers.com> domain, from Respondent posing as “[Name], Senior Recruiter” for Valero attempting to defraud the intended victim. The intended victim contacted Complainant who verified that Respondent’s activities were part of a scam and not authorized by Valero. Such use of the Domain Name could be highly disruptive to Complainant’s business activities and reputation.
In addition to the circumstances referred to above, Respondent appears to have provided incorrect/false or incomplete information in its registration information. Respondent’s failure to file a response is further indicative of Respondent’s bad faith.
Accordingly, the Panel finds that Respondent has registered and is using the Domain Name in bad faith and Complainant succeeds under the third element of paragraph 4(a) 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 <valero-careers.com> be transferred to Complainant.
Kimberley Chen Nobles
Date: May 31, 2021