WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Valero Marketing and Supply Company and Valero Energy Corporation v. David Arbelaez
Case No. DCO2013-0031
1. The Parties
The Complainants are Valero Marketing and Supply Company and Valero Energy Corporation, both of San Antonio, Texas, United States of America (USA), represented by Adams and Reese LLP, USA.
The Respondent is David Arbelaez of Arlington, Texas, USA.
2. The Domain Name and Registrar
The disputed domain name <valero.co> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 18, 2013. On November 19, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 19, 2013, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 11, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 31, 2013. The Response was filed with the Center on December 30, 2013.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on January 21, 2014. 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 Energy Corporation, an international manufacturer and marketer of transportation fuels and other petrochemical products, is incorporated in the State of Delaware, USA and headquartered in San Antonio, Texas, USA. The Complainant Valero Marketing and Supply Company, also a Delaware corporation, is a wholly owned subsidiary that holds registered trademarks for use in the Complainants’ business. Valero Energy Corporation is a publicly traded Fortune 500 company. According to the Complaint and the Complainants’ annual report, the group employs approximately 10,500 people and operates refineries in the USA, Canada, the United Kingdom, Ireland, and several locations in the Caribbean. The group also owns or franchises thousands of VALERO-branded gasoline filling stations in the United States, including many in the part of Texas where the Respondent is located.
The Complainants use trademarks consisting of, or incorporating, the VALERO mark. These include the following registered United States trademarks currently held in the name of the Complainant Valero Marketing and Supply Company:
VALERO ENERGY CORPORATION (and design)
July 20, 1982
January 8, 1985
April 9, 2002
The Complainants operate a website at “www.valero.com”.
The Domain Name was created on July 23, 2010 and registered to the Respondent, an individual residing in Arlington, Texas, USA. The Domain Name resolves to a parking page with sponsored, presumably pay-per-click (“PPC”), advertising for a variety of third-party services and products. These include advertisements for gasoline stations and oil company credit cards that compete with the Complainants’. The page displays the Registrar’s logo and announces that “this Web page is parked for FREE, courtesy of GoDaddy.com.”
The Complaint attaches screen shots of the parking page to which the Domain Name resolved in November 2013. It was essentially similar to the parking page described above, with PPC advertising links for both competing and unrelated products, but it also featured a link to “Buy this Premium Domain Name at GoDaddy.com”, listing the “Current price” as USD $20,000.
The Complaint attaches email correspondence between the Complainants’ counsel and the Respondent on November 13, 2013. The Complainants’ counsel cited the Complainants’ trademarks and demanded transfer of the Domain Name. The Respondent replied by email within twenty minutes, as follows:
“My wife and I are not selling this domain. If it was listed for sale that must have been in error or from years ago. We purchased this domain a very long time ago because we have had plans to name our son Valero which means (healthy and strong), we do not have plans to sell or have plans to do any kind of business attached to this domain.”
Minutes later, the Complainants’ counsel replied by email, asking if the Respondent would transfer the Domain Name in exchange for out-of-pocket registration costs. The Respondent promptly replied as follows:
“I'd like to keep it for the reason why we purchased it. We do not have any plans to do any business with it. If your saying that your forcing us than I need to call around and make sure that I'm not being taken advantage of. We dont want to sell it and have already had emails from other companies asking us to which we said no to. We would love to keep it since we purchased it and do not have any bad intentions.”
The Complainants’ counsel then revisited the website associated with the Domain Name, discovering that the Domain Name was now listed as “available through GoDaddy Auctions” until December 29, 2013, and that the price had been reduced to USD $8,500 (as shown in screen shots attached to the Complaint). Counsel promptly emailed this query to the Respondent:
“I noticed that you just lowered the asking price to $8,500 and initiated a 45-day auction period. Why?”
The record does not include any further emails between the parties.
5. Parties’ Contentions
The Complainants observe that the distinctive portion of the Domain Name is identical to its VALERO mark. The Complainants assert that they have not licensed the Respondent to use the mark and that the Respondent has no rights or legitimate interests in the Domain Name.
The Complainants infer bad faith in the registration and use of the Domain Name. They argue that the Respondent, located in the same state where the Complainants are headquartered, must have been aware of the Complainant’s well known and long established VALERO mark. The Complainants conclude that the Respondent selected and attempted to sell the Domain Name because of its potential for misleading Internet users for commercial gain.
The Response acknowledges that the Respondent purchased the Domain Name in 2010. The Respondent does not dispute the Complainants’ trademark rights and does not deny prior knowledge of the VALERO trademark.
The Respondent contends that he acquired the Domain Name for “personal non-commercial use”. The Respondent states that he is of Spanish heritage and that “valero” is “a term in common usage in the Spanish language.” According to the Response,
“Respondent informed [the Complainant’s counsel] that the Respondent had purchased this domain name because of its definition/meaning in the Spanish language and for use in publishing Respondent’s children’s pictures in a family website.”
The Respondent states that he has not profited from the Domain Name and does not intend to sell it. According to the Response,
“Respondent has no control over GoDaddy auctions for any other third party for making it for sale.”
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
A. Identical or Confusingly Similar
The Complainants hold registered VALERO trademarks, and the Domain Name incorporates that mark in its entirety.
The Domain Name string also includes, of course, the top-level domain name “.co”. In determining whether a domain name is identical or confusingly similar to a complainant’s mark, WIPO panels have typically disregarded the generic top-level domain (“gTLD”) or country code top-level domain (“ccTLD”) portion of the URL address. This is a sensible approach in most cases involving broadly available top-level domains, such as “.com” or “.org”, because virtually any company or organization might choose to operate a website using such a common top-level domain, and Internet users may be expected to focus on the more distinctive portion of the domain name. That assumption may not be entirely valid, however, where the top-level domain name is highly specific or restrictive. That might be the case, for example, with some of the proposed new gTLDs or with a ccTLD that is limited to residents of the sponsoring country.
The Domain Name in this proceeding includes the ccTLD assigned to Colombia, “.co”. Like the gTLD “.com”, however, this portion of the DNS address is not materially distinctive, because this ccTLD is now widely used by entities of all kinds, both within and outside Colombia. The “.co” ccTLD was made available to registrants located anywhere in the world, with much publicity, beginning July 10, 2010. The Domain Name in the current proceeding was registered just a few days after this change. The “.co” ccTLD has attracted multinational companies as registrants because of its similarity to the most popular gTLD, “.com”, and to the common abbreviation “co” signifying a company in English-speaking jurisdictions. Some companies use the “.co” ccTLD for short URLs that direct users to their established online locations, such as Google’s <g.co> and Twitter’s <t.co>. See the “.co” registry operator’s website at “www.go.co” and the Wikipedia article, “.CO”. Consequently, the Panel concludes that the “.co” portion of the Domain Name does not materially affect the determination that the Domain Name is identical or confusingly similar to the Complainants’ mark.
UDRP panels customarily treat the first element of a Policy complaint as a standing requirement, which simply requires “a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name”; some panels refer as well to the “overall impression” created by the domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2. The Panel finds that these tests are met in this case and concludes that the Domain Name is identical to the Complainants’ VALERO marks for purposes of the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a disputed domain name, it is well established that after a complainant makes a prima facie case, the burden of production to show rights or legitimate interests in the domain name shifts to the respondent. See WIPO Overview 2.0, paragraph 2.1.
In this proceeding, it is undisputed that the Complainants did not give permission to use the VALERO mark in the Domain Name. The Respondent claims that the Domain Name is a “term in common use in the Spanish language” and that he intended to make noncommercial personal use of the Domain Name for a website displaying family photographs. In his earlier email exchange with the Complainants’ counsel, the Respondent explained that he planned to name his son “Valero”, signifying “healthy and strong”.
These various explanations are not convincing. “Valero” is not a dictionary word in Spanish, and it is not a conjugation of the Spanish verb “valer” (to value or price). In Latin, “vale” (not “valero”) was an imperative conjugation of a verb expressing “be healthy” or “be strong”, which was used as an ancient Roman greeting. However, the Panel finds no evidence in the record, or in online reference works such as dictionaries and Wikipedia, that “Valero” is used as anything but a family name or place name. According to the Complainants’ website, the Complainants, headquartered in San Antonio, Texas, took their company name from the most famous historical landmark in San Antonio, the fortress known as the “Alamo” (site of the storied 1836 siege in the Texas war of independence). This was formerly the Catholic “Mission San Antonio de Valero”, named for Saint Anthony of Padua and the Marquis de Valero. The Respondent has not established a connection with this or any other “Valero”, and he has not demonstrated that “valero” has a generic sense that he legitimately intended to employ in using the Domain Name. In the three and a half years since he registered the Domain Name, the Respondent has not made any such use of it, nor does the Response outline any preparations to do so.
The Panel concludes that the Respondent has not rebutted the Complainants’ prima facie case that the Respondent lacks rights or legitimate interests in selecting a Domain Name identical to the Complainants’ well established trademark.
C. Registered and Used in Bad Faith
The Policy’s non-exhaustive list of circumstances that shall be considered evidence of bad faith (paragraph 4(b)) includes the following:
“(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 . . .
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The Complainants suggest that these examples all fit the current circumstances. The claim is not persuasive under Policy paragraph 4(b)(ii), because there is no evidence of the Respondent engaging in a “pattern” of preventing trademark owners from reflecting their marks in corresponding domain names. The other examples are instructive in these circumstances, and the Panel finds evidence of bad faith within the meaning of the Policy.
The VALERO mark is distinctive and well known, especially in the region where the Respondent resides, and the Respondent does not deny prior knowledge of the mark at the time he registered the Domain Name. As discussed above in connection with the second element of the Policy, the Respondent’s successive explanations for choosing the Domain Name are not convincing. There is no demonstrated generic sense of “valero” other than as a family or place name, in which the Respondent claims no interest. The Respondent has not used the Domain Name in any way relevant to such a generic significance.
Instead, the Domain Name has been used to advertise third-party goods and services, including those that compete with the Complainants’ offerings, effectively exploiting the Complainants’ trademark to mislead Internet users for commercial gain, as described in the Policy, paragraph 4(b)(iv). The Respondent denies receiving any benefit from the PPC advertising, and the Panel finds no reason to discount this statement. But the Respondent cannot avoid responsibility for allowing the Domain Name to be used for that commercial purpose for more than three years. The registration agreement provides, as mandated by ICANN, that the Respondent “represents and warrants” that “neither the registration of the domain, nor manner it is directly or indirectly used, infringes the legal rights of any third party.” The registration agreement also plainly states that by default the Registrar will park the Domain Name for PPC advertising, without compensation to the registrant, and that the Respondent can change that default setting. The registrant can also choose to subscribe to the Registrar’s “Cash Parking” service, for a fee, and receive some portion of the PPC advertising revenues. The Registrar disclaims any responsibility for monitoring the content on the parking page for unlawful, offensive, or infringing content. Thus, the registration agreement makes the registrant wholly responsible for the consequences, such as trademark infringement claims, if a domain name is identical or confusingly similar to a trademark and the ad-server software posts PPC advertising links to the trademark holder’s competitors.
The Panel concludes that allowing long-term PPC parking of the Domain Name, and ignoring the likely consequences when the Domain Name is identical to a well-known trademark, cannot be considered a good-faith use of the Domain Name.
The Domain Name has also been used in another way. It has been advertised for sale as a “premium domain name”, first for an asking price of USD $20,000 and then for USD $8500. Since there is no demonstrated generic sense of “valero” other than as an uncommon family or place name, it is likely that these relatively large sums represent not its generic value but its perceived trademark value – meaning its capacity to attract Internet users aware of the Complainants’ VALERO mark. The Respondent’s conduct in registering and offering to sell a Domain Name identical to a well-known trademark is indicative of bad faith within the meaning of the Policy, even if the record does not establish that the Respondent registered the Domain Name “primarily” to sell it to the trademark holder or a competitor, as described in the Policy, paragraph 4(b)(i).
The Respondent states that he had no intent to sell the Domain Name, but it was undeniably listed for sale through the Registrar’s related auction service, GoDaddy Auctions. It appears from the Registrar’s website that this requires the owner of a domain name to sign a separate “Auctions Membership Agreement”, and it is not surprising that the Registrar would sell domain names only with the owners’ authorization. The Panel finds no provision in the registration agreement that establishes this authorization by default. Moreover, in this case the auction price and auction time period were substantially altered less than half an hour after the Respondent received the first demand email from the Complainants’ counsel. This all indicates that the Respondent was involved in the attempted sale of the Domain Name, for an amount far in excess of typical out-of-pocket registration costs, where the likely buyers would be the Complainant, its competitors, or third parties seeking to exploit the Complainants’ trademark -- because nothing in the record suggests a generic value to the Domain Name comparable to its trademark value.
The Panel finds on the available record that the Respondent more likely than not selected the Domain Name, allowed it to be used for PPC advertising, and attempted to sell it at a substantial profit, because of its commercial value in suggesting a connection with the Complainants. This represents bad faith in terms of the Policy. The Panel finds that the third element of the Policy has been established.
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.co>, be transferred to the Complainant Valero Marketing and Supply Company, which is the Complainant that currently owns relevant United States trademark registrations.
W. Scott Blackmer
Date: February 4, 2014