WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Valero Energy Corporation, Valero Marketing and Supply Company v. Bargin Register, Inc. - Client Services, URLBrokeringcom, and Telecom Tech Corp.
Case No. D2012-2399
1. The Parties
The Complainants are Valero Energy Corporation and Valero Marketing and Supply Company of San Antonio, Texas, United States of America, represented by Adams and Reese LLP, United States of America. Valero Energy Corporation and Valero Marketing and Supply Company are jointly referred to in the Complaint and herein as the “Complainant”.
The Respondents are Bargin Register - Client Services, Inc. (the “First Respondent”) of Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, URLBrokeringcom (the “Second Respondent”) of Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, and Telecom Tech Corp. (the “Third Respondent”) of Panama City, Panama (jointly referred to herein as the “Respondent”).
2. The Domain Name and Registrar
The disputed domain name <valerojobs.net> (the “Domain Name”) is registered with Bargin Register Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 5, 2012. On December 6, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. Several reminders were sent to the Registrar by email on December 7, 10, 11 and 13, 2012. On December 13, 2012, the Center informed the Registrar and parties, that in order to proceed in this case, the Center would need to proceed on the assumption that the information related to the Domain Name gathered from the Complaint and the public WhoIs database was correct. The Center would do so reluctantly, and accepted no responsibility in the event of complications resulting from inaccurate or incomplete information.
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 17, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 6, 2013.
On December 27, 2012, the Center received an email communication from the Registrar disclosing “Telecom Tech Corp.” as the registrant for the Domain Name. On the same day, the Center requested the Registrar to clarify the registrant information for the Domain Name as the publicly available WhoIs information indicated “URLBrokeringcom” as the registrant for the Domain Name.
On December 28, 2012, in the absence of any response from the Registrar, the Center informed the Registrar and parties that the Center would proceed to forward a copy of the Notification of Complaint and related documents to the contact details associated with “Telecom Tech Corp.” provided by the Registrar and “URLBrokeringcom” shown at the public WhoIs Information. The Center noted that the due date for Response shall remain January 6, 2013. The Center also invited the Complainant to provide any submission it may wish to make concerning the Registrar’s communication by January 2, 2013. Any final determination as to issues of Respondent identity or the Registrar conduct would be a matter for the Panel, upon appointment. On the same day, the Center forwarded a copy of the Notification of Complaint and related documents to the contact details associated with “Telecom Tech Corp.” and “URLBrokeringcom”.
The Center did not receive any comments from the Complainant by the specified due date. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 7, 2013.
The Center appointed Nicholas Smith as the sole panelist in this matter on January 15, 2013. 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.
On January 22, 2012, following consideration of the issue of the identity of the proper respondent in this matter the Panel issued a Panel Order. The Panel Order was as follows:
Under the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), the Respondent is defined as the holder of a domain name registration against which a complaint is initiated. At the present time it appears that the holder of the domain name registration is either:
1) Bargin Register, Inc. – Client Services (firstname.lastname@example.org) (as stated in the Complaint);
2) URLBrokeringcom (according to publicly available WhoIs information); or
3) Telecom Tech Corp. (as disclosed by the Registrar by email on December 27, 2012).
In order to ensure that a finding of transfer or denial can be made against the Respondent as defined in the Rules it is necessary for the Complainant to amend the Complaint to add “URLBrokeringcom” and “Telecom Tech Corp.” to the Complaint as the Second and Third Respondents respectively.
Therefore the Panel makes the following orders:
1) The Complainant has until January 29, 2013 to file an amendment to the Complaint or an amended Complaint, listing “URLBrokeringcom” and “Telecom Tech Corp.” as the Second and Third Respondents in the proceeding. The Complainant may, if it chooses to do so, include further arguments or submissions solely in relation to the issues arising out of the apparent change in registrant details reflected in the publicly available WhoIs and as disclosed by the Registrar. The amendment document should be served on all Respondents using the following e-mails: […]@gmail.com; […]@urlbrokering.com; […]@barginregister.com; […]@barginregister.com.
2) The Respondent shall thereafter have an opportunity to provide any submission it may choose to make regarding the substance of this Procedural Order or the Complainant’s submission in response to this Procedural Order, by February 2, 2013.
3) Such materials should be submitted to the WIPO Arbitration and Mediation Center (“The Center") by email to email@example.com for forwarding to the Panel.
4) The Panel will deliver its decision on or before February 9, 2013.
On January 22, 2013, the Complainant filed an Amended Complaint listing “URLBrokeringcom” and “Telecom Tech Corp.” as the Second and Third Respondents. None of the Respondents filed any submission in response to the amendment to the Complaint. The Panel therefore proceeds to its decision on the basis of the Amended Complaint.
4. Factual Background
The Complainants are Valero Energy Corporation, a Delaware corporation whose principal place of business is located in San Antonio, Texas, United States, and Valero Marketing and Supply Company, a wholly owned subsidiary of Valero Energy Corporation (jointly referred to as the “Complainant”).
The Complainant has used trade marks comprising VALERO continuously in the United States for at least 31 years, has spent millions of US dollars in advertising, marketing and promoting the VALERO brand using print, television, radio, Internet, billboards and signage among other advertising media. The Complainant has operated a website at ”www.valero.com” since at least 1996. The Complainant is the owner of a number of trade marks registered in the United States for the word mark VALERO (the “VALERO Mark”). These registrations collectively cover a number of goods and services connected with the oil and gas field, including in particular Oil and Gas Exploration, Production, Processing, and Distribution Services.
The Domain Name <valerojobs.net> was registered on August 30, 2011. The Domain Name has resolved to a series of websites (the “Respondent’s Website”) that make a number of references to the Complainant and to its role as an energy production and supply company.
5. Parties’ Contentions
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant’s VALERO Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the VALERO Mark. It owns trade mark registrations for the VALERO Mark in the United States.
The Domain Name consists of the VALERO Mark in its entirety with the addition of the generic word “jobs”. UDRP panels “have repeatedly held that the addition of a generic word to a recognized mark creates a confusing similarity between the domain name and the mark of the [c]omplainant”. The Bank of Nova Scotia v. Whois Protection, WIPO Case No. D2007-0884. See also Valero Energy Corporation, Valero Marketing and Supply Company v. Domain Name Proxy, LLC, Navigation Catalyst Systems, Inc., WIPO Case No. D2011-1227.
The Respondent has no rights or legitimate interests in the Domain Name. The Respondent does not hold a trade mark for “valero” or any similar trade mark. The Respondent is not an authorised user of the VALERO Mark nor is the Respondent authorised or affiliated with the Complainant. Rather the Respondent appears to use the Domain Name to operate a domain-parking website for profit which is intended to trade on the fame of Complainant’s mark. Lastly, the Respondent is currently offering the domain name for sale for USD 5,000 on an auction site, seeking to reap profits from the goodwill associated with Complainant’s VALERO Mark. Such use does not give rise to rights or legitimate interests.
The Domain Name was registered and is being used in bad faith. At the time Respondent registered the Domain Name <valerojobs.net> on August 30, 2011 the Complainant was listed as the 24th largest company in the United States according to Fortune magazine. The Respondent was undoubtedly aware of the Complainant’s prominence in the business world when it registered the Domain Name. The Respondent’s use of the VALERO Mark in <valerojobs.net> is intended to attract the Complainant’s customers and other Internet users to <valerojobs.net> for financial gain by creating a likelihood of confusion with trade marks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website and the goods and services advertised thereon. The Respondent has registered and used the Domain Name in bad faith by registering the Domain Name while being aware of the Complainant’s rights and then using the Domain Name for financial gain.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identity of the Respondent and Conduct of the Registrar
At the time of the commencement of the proceeding, the publically available WhoIs database listed the registrant of the Domain Name as “Bargin Register, Inc. - Client Services”. From the WhoIs information it was impossible to determine if the Domain Name was formally owned by the Registrar or if it was merely held by the Registrar operating as a privacy service for the actual owner.
In all circumstances and particularly where registrars operate a privacy service it is vital to the ongoing operation of the UDRP for registrars to promptly respond to the UDRP Provider’s request for registrar verification, and, when appropriate, inform the UDRP Provider of the actual registrant of the Domain Name (see Association Robert Mazars v. Private Whois Service, c/o mazarsrevenge.com, WIPO Case No. D2009-0183, Four Seasons Hotels Limited v. Internet bs Corporation/Private Whois Service, WIPO Case No. D2009-1657). In particular without affirmative confirmation from a registrar that a disputed domain name has been locked to prevent breach of paragraph 8(a) of the Policy there is the danger that an unscrupulous respondent might engage in cyberflight.
As has been outlined above, the Registrar failed to respond to the Center’s original verification request and to four additional emails from the Center thereafter. An incomplete registrar verification was provided three weeks after a request was sent and after these proceedings were formally commenced. The Panel views the Registrar’s conduct as unacceptable.
The Panel is aware that in a number of recent UDRP cases the Registrar, Bargin Register Inc. has either failed to respond to the Center’s requests for registrar verification or failure to respond in a timely manner (see e.g. The Uder Company Pty Ltd and Stay In Bed Milk & Bread Pty Ltd (trading as Aussie Farmers Direct) v. PrivacyProtect.org, Domain Admin, ID # 10760, WIPO Case No. D2012-0924; “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Private Whois, WIPO Case No. D2012-0383; Royal Copenhagen A/S v. Private - EXP 2, WIPO Case No. D2012-0637, and KinderCare Learning Centers LLC v. PrivacyProtect.org, WIPO Case No. D2011-1890 which outlines the Registrar’s conduct over the two year period from 2009 to 2011).
In light of the above, the Panel invites the Center bring this decision and the Registrar’s conduct to the attention of the Internet Corporation for Assigned Names and Numbers (ICANN), to be dealt with appropriately.
At some point between the submission of the Complaint and December 28, 2012, the publically available WhoIs database was amended to list “URLBrokeringcom” as registrant of the Domain Name. Furthermore in its registrar verification of December 27, 2012, the Registrar indicated that the registrant of the Domain Name was “Telecom Tech Corp.”.
The Panel considers that, given the uncertainty surrounding the actual ownership of the Domain Name, not to mention the Registrar’s conduct in delaying the provision of the registrar verification and allowing the amendment of the WhoIs data after the filing of the Complaint, that it is appropriate for each of Bargin Register, Inc. – Client Services, URLBrokeringcom, and Telecom Tech Corp be the named Respondent in the present proceeding.
B. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the VALERO Mark, having registrations for VALERO as a trade mark in the United States.
The Domain Name consists of the VALERO Mark and the suffix “jobs”. The addition of a generic word such as “jobs” to a recognized trade mark does not operate to prevent a finding of confusing similarity between the trade mark and the domain name. An individual viewing the Domain Name may be confused into thinking that the Domain Name would refer to a site relating to employment with the Complainant. The Panel finds that the Domain Name is confusingly similar to the Complainant’s VALERO Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
C. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making 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.” (Policy, paragraph 4(c))
The Respondent is not affiliated with the Complainant in any way. It has not been authorised by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the VALERO Mark or a mark similar to the VALERO Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a legitimate noncommercial use. Rather the Respondent’s Website appears to be a “domain parking” website which contains references to the Complainant and its business as well as a series of click through advertisements, for which the Respondent most likely receives revenue. This type of use does not constitute a bona fide offering of goods or services.
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had an opportunity to rebut the presumption that it lacks rights or legitimate interests but has chosen not to do so. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith:
(i) circumstances indicating that the Respondent has registered or has 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 trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) the Respondent has registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the Respondent’s website or location or of a product or service on the Respondent’s website or location.
The Panel finds that it is likely that the Respondent was aware of the Complainant and its reputation in the VALERO Mark at the time the Domain Name was registered. The Complainant is one of the 25 largest companies in the United States. The word “valero” is a coined word that has no meaning other than by reference to the Complainant. Furthermore, the content of the Respondent’s Website, which makes frequent references to the Complainant and its business, indicates knowledge of the Complainant. These factors clearly indicate that the Respondents was aware of the Complainant at the time the Domain Name was registered.
The Panel finds the registration of the Domain Name in awareness of the Complainant’s VALERO Mark and in the absence of rights or legitimate interests amounts to registration in bad faith.
The list of circumstances in paragraph 4(b) of the Policy in which bad faith can be found is non-exhaustive, see TV Globo Ltda. v. Radio Morena, WIPO Case No. D2000-0245. In the present case, the Respondent has:
a) created a domain parking website, which makes references to the Complainant, indicating a knowledge of the Complainant and its business. The Respondent’s Website also contains a series of click-through advertisements, for which the Respondent presumably receives some revenue; and
b) offered to sell the Domain Name for USD 5,000, a sum well in excess of any out-of-pocket costs directly related to the Domain Name.
It appears that the Respondent is using the Domain Name for the purpose of selling it, for valuable consideration in excess of their documented out-of-pocket costs directly related to the Domain Name, and/or to attract, for commercial gain, Internet users to its 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 the Respondent’s Website. The Panel finds such conduct amounts to use of the Domain Name in bad faith.
Accordingly, the Panel finds that the Respondent has registered and used the Domain Name 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 <valerojobs.net> be transferred to the Complainant.
Date: February 5, 2013