WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Valero Energy Corporation, Valero Marketing and Supply Company v. Privacy service provided by Withheld for Privacy ehf / Love Nelson
Case No. DCO2021-0087
1. The Parties
Complainants are Valero Energy Corporation and Valero Marketing and Supply Company (collectively, “Complainant”), United States of America (“United States” or “U.S.”), represented by Fasthoff Law Firm PLLC, United States.
Respondent is Privacy service provided by Withheld for Privacy ehf, Iceland / Love Nelson, United States.
2. The Domain Name and Registrar
The disputed domain name <valero-ca.co> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 7, 2021. On November 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 9, 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 Complainant on November 11, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amended Complaint on November 11, 2021. Complainant filed an amended Complaint on November 15, 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 November 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 6, 2021. Respondent did not submit a response. Accordingly, the Center notified Respondent’s default on December 7, 2021.
The Center appointed Scott R. Austin as the sole panelist in this matter on December 21, 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
Complainant Valero Energy Corporation and its wholly-owned subsidiary, Valero Marketing and Supply Company, consolidated for purposes of this UDRP proceeding based on the parent - subsidiary ownership interest in and control over the trademarks at issue (collectively referred to for purposes of this proceeding as Complainant), states in the Complaint and provides evidence in the respective Annexes attached sufficient to support the following facts. Complainant is a leading oil and gas processing and distribution company, as well as a leading provider of automobile service station services operated throughout the United States under the trademark and service mark VALERO (the “VALERO Mark”): As of June 23 2021, when the disputed domain name was registered, Fortune Magazine listed Complainant as the 37th largest company in the United States. Since at least as early as 1983, Complainant has spent tens of millions of dollars advertising, marketing, and promoting the VALERO Mark in the United States and throughout the world, which significant investment and continuous use for almost four decades has developed consumer goodwill and well known recognition of the VALERO Mark.
Complainant owns numerous registrations for the VALERO Mark in the U.S., where Respondent is located, and around the world, including:
- United States Registration No. 1314004, VALERO, registered January 8, 1985 for “Oil and Gas [ EXPLORATION, PRODUCTION, ] PROCESSING AND DISTRIBUTION SERVICES” in international class 42 and claiming a first use date of February 7, 1983; and
- United States Registration No. 2656971, VALERO, registered December 3, 2002, for “convenience store services” in international class 35 and “Automobile Service Station services and car wash services in international class 37, both claiming a first use date of August 15, 2000.
Complainant further has continuously owned and operated an Internet website accessed through the domain name incorporating the VALERO Mark <valero.com> at “www.valero.com” for many years (the “VALERO Mark Official Website”), and also utilizes that domain name for company email addresses through which it communicates internally, with customers, vendors, and the public in general.
The disputed domain name <valero-ca.co> was created on June 23, 2021, and at the time of filing of the Complaint, the disputed domain name redirects Internet users to the home page for Complainant’s Canadian operations on the VALERO Mark Official Website. Respondent also uses the disputed domain name to send emails to unsuspecting third parties to engage in a fraudulent phishing scheme whereby Respondent impersonates a Valero employee, offers a job position and obtains personal data from the targeted Internet user through a fake “job interview” form Respondent delivers to them.
5. Parties’ Contentions
Complainant contends that the disputed domain name is identical or confusingly similar to Complainant’s trademark; that Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
There are no exceptional circumstances within paragraph 5(e) of the Rules to prevent this Panel from determining the present dispute based upon the Complaint (as amended), notwithstanding the failure of any person to lodge a substantive formal Response in compliance with the Rules. Under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”.
Where no substantive Response is filed, however, Complainant must still make out its case in all respects under paragraph 4(a) of the Policy. To succeed, Complainant must demonstrate that all the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel will address each of these requirements in turn.
The standard of proof under the Policy is often expressed as the “balance of the probabilities” or “preponderance of the evidence” standard. Under this standard, an asserting party needs to establish that it is more likely than not that the claimed fact is true. See, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.2.
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. WIPO Overview 3.0, section 1.2.1. Complainant has demonstrated its rights because it has shown that it is the holder of valid and subsisting trademark registrations for the VALERO Mark. See Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen, WIPO Case No. D2014-0657.
Prior UDRP panels have held “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”. See WIPO Overview 3.0, section 1.7. The Panel finds here that the disputed domain name wholly incorporates Complainant’s registered VALERO Mark. Furthermore, in assessing confusing similarity, it is well established that merely attaching after a mark a hyphen and additional terms such as “ca” does not prevent a finding of confusing similarity. See WIPO Overview 3.0, section 1.8; see also, L’Oreal v. Tracey Johnson, WIPO Case No. D2008-1721 (typographic differences, such as inclusion or omission of hyphens and apostrophes do not prevent a finding of confusing similarity).
Finally, prior UDRP panels have found that the applicable Top-Level Domain (“TLD”) in a domain name (e.g., “.com”, “.club”, “.co”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. Accordingly, the TLD “.co” does not avoid a finding of confusing similarity. See WIPO Overview 3.0, section 1.11; see also The Manufacturers Life Insurance Company v. WhoisGuard, Inc. / hww toolz, director WIPO Case No. DCO2021-0009; see also, Mozilla Foundation and Mozilla Corporation v. Limpkin Walker, WIPO Case No. DME2008-0007.
Complainant’s VALERO Mark is clearly recognizable in its entirety in the disputed domain name. The Panel finds, therefore, that the disputed domain name is confusingly similar to the VALERO Mark in which Complainant has trademark rights and Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Under the second element of the Policy, a complainant is first required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. If the complainant makes that showing, the burden of production on this element shifts to the respondent to come forward with relevant evidence of such rights or legitimate interests in the domain name. If the respondent fails to come forward with such evidence, the complainant is generally deemed to have satisfied the second element. See WIPO Overview 3.0, section 2.1. See also, Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393.
Complainant has established, prima facie, that Respondent lacks rights or legitimate interests in the disputed domain name.
Complainant asserts that there was never any connection, affiliation or legitimate business relationship between Complainant and Respondent giving rise to any license, permission, or other right by which Respondent could own or use any domain name incorporating or imitating the VALERO Mark and it has never authorized, licensed, or otherwise permitted Respondent to use the VALERO Mark in any manner, for the disputed domain name or otherwise.
Complainant has also shown based on persuasive evidence submitted that Respondent is not commonly known by the disputed domain name. The original Respondent listed in the WhoIs record submitted with the initial Complaint was “Privacy service provided by Withheld for Privacy ehf”. Later, when the Registrar disclosed the underlying registrant, “Love Nelson”, Complainant submitted its amendment to the Complaint to include this registrant as Respondent. In this proceeding, neither the original nor the disclosed Respondent name bears any resemblance to the disputed domain name. Based on these facts, combined with the lack of evidence in the record to suggest otherwise, this Panel finds that Respondent is not commonly known by the disputed domain name or any variation thereof pursuant to Policy paragraph 4(c)(ii).
Complainant also contends and has provided detailed evidence showing Respondent’s use of the disputed domain name in connection with fraudulent email activity to impersonate Complainant as part of an employment scam to phish personal or financial information from unsuspecting users seeking employment. Complainant further argues that because the disputed domain name effectively impersonates Complainant, any email originating from the disputed domain name carries a high risk of implied affiliation misleading Complainant’s employees, subsidiaries, business partners, agencies, and customers and constitutes illegitimate, bad faith use. See Tetra Laval Holdings & Finance S.A. v. Himali Hewage, WIPO Case No. D2020-0472.
Complainant has asserted and submitted evidence sufficient for this Panel to find that Respondent has actually sent communications including application forms to unsuspecting job seekers and to reasonably infer they in turn relied upon Respondent’s disputed domain name which falsely implies an affiliation with Complainant and gave up their information to Respondent. Prior UDRP panels have found use of a disputed domain name to facilitate a scheme such as Respondent’s to engage in illegitimate or criminal activity through a false affiliation with Complainant is use of the disputed domain name in bad faith. See bioMérieux v. Registration Private, WIPO Case No. D2020-3499.
Prior UDRP panels have held that the use of a domain name for illegal activity (e.g., phishing, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent. See, WIPO Overview 3.0, section 2.13. See also, Springer Nature Limited v. Registration Private, Domains By Proxy, LLC / Collections Springer Nature, WIPO Case No. D2020-0955.
Furthermore, prior UDRP panels have held that domain names that are identical – or as here, nearly identical – to a complainant’s trademark carry a high risk of implied affiliation, and that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. See WIPO Overview 3.0, section 2.5.1. In this case, the disputed domain name is nearly identical to Complainant’s VALERO Mark.
In view of the above, the Panel finds that Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not submitted any argument or evidence to rebut Complainant’s prima facie case. The Panel determines, therefore, that Respondent does not have rights or legitimate interests in the disputed domain name and that Complainant has successfully met its burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
First given the Panel’s findings in Section 6B above it should be noted that prior UDRP panels have held that “lack of respondent’s rights or legitimate interests in the domain name is undoubtedly indicative of registration in bad faith.” Puerto 80 Projects SLU v. Domains By Proxy, LLC, DomainsByProxy.com and Jupiter Miguel Tarrero Gallo, WIPO Case No. D2012-1563.
The Panel finds based on the record submitted, that Respondent clearly registered the disputed domain name to engage in a fraudulent phishing scheme impersonating an employee of Complainant to send phishing emails to unsuspecting third parties to complete Respondent’s fake “job interview” form as well as other fake documents that purport to contain the signature of a Valero employee, and embody Complainant’s VALERO Mark, and contain unauthorized uses of Complainant’s VALERO Mark. It is implausible, therefore, to believe that Respondent was not aware of the VALERO Mark when it registered its confusingly similar disputed domain name to engage in its phishing scheme. Complainant contends this shows Respondent’s clear intention to target the VALERO Mark through the registration of the disputed domain name. In the circumstances of this case, where Respondent registered the disputed domain name to blatantly engage in per se illegitimate activity, with actual knowledge demonstrated through configuration of a disputed domain name targeting Complainant’s registered mark, such a showing is sufficient to establish bad faith registration. See, WIPO Overview 3.0, section 3.1.4; see also bioMérieux v. Registration Private, WIPO Case No. D2020-3499.
Based on these facts the Panel finds that Respondent uses the disputed domain name in bad faith by: (1) passing itself off as Complainant; (2) impersonating an employee of Complainant’s company offering job positions to Internet users seeking jobs; and (3) perpetrating a fraudulent scheme to phish personal data from the targeted Internet users through a fake “job interview” form Respondent provides to them. Respondent has registered the disputed domain name, confusingly similar to Complainant’s well known VALERO Mark, in order to capitalize on Complainant’s reputation in furtherance of Respondent’s fraudulent email phishing scheme.
Finally, Complainant contends Respondent is also using the disputed domain name in bad faith by redirecting it to Complainant’s VALERO Mark Official Website at “www.valero.com”. Prior UDRP panels have held such redirecting use as evidence of bad faith registration and use of a disputed domain name because so long as a respondent owns the domain name, it can redirect it to any website of its choosing, and that abusive threat is left hanging over the head of a complainant. See Securitas AB v. Advocaat Peter, WIPO Case No. D2020-2126; CSC Holdings, Inc. v. cablevisionlightpath.com Inc., WIPO Case No. D2004‑1057; and Conair Corp. v. Pan Pin, Hong Kong Shunda Int’l Co. Ltd., WIPO Case No. D2014-1564.
For these reasons, the Panel finds that Respondent has registered and is using the disputed domain name in bad faith and Complainant has met its burden 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 disputed domain name <valero-ca.co> be transferred to Complainant.
Scott R. Austin
Date: January 4, 2022