WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Valero Energy Corporation, Valero Marketing and Supply Company v. Above.com Domain Privacy / Host Master, Transure Enterprise Ltd
Case No. D2015-0245
1. The Parties
The Complainants are Valero Energy Corporation, and Valero Marketing and Supply Company of Texas, United States of America, represented by Fasthoff Law Firm PLLC, United States of America.
The Respondent is Above.com Domain Privacy of Beaumaris, Australia / Host Master, Transure Enterprise Ltd of Tortola, Virgin Islands (British), Overseas Territory of The United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <valerocard.com> (the “Domain Name”) is registered with Above.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 16, 2015. On February 17, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 20, 2015, 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 February 23, 2015 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 February 25, 2015.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 27, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 19, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 20, 2015.
The Center appointed Linda Chang as the sole panelist in this matter on April 14, 2015. 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 Complainants are Valero Energy Corporation, a Delaware corporation with principal place of business in San Antonio, Texas, the 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 a long history of being listed in the Fortune 500, and at the time the Respondent registered the Domain Name, the Complainant was listed as the 16th largest company in the United States according to the Fortune magazine.
The Complainant has continuously used the VALERO mark in commerce for over 30 years in relation with oil and gas related products and services, and is the owner of a number of trademark registrations in the United States for the VALERO mark, registered as early as in July 1982.
The Domain Name was registered on June 13, 2008, and was used to pop up security warnings and then attempt to induce Internet visitors to call a toll-free number for technical support at the time of filing this Complaint, and is currently used as a parking site for pay-per-click links at the time of preparing this decision.
5. Parties’ Contentions
The Complainant alleges that the Domain Name is confusingly similar to the Complainant’s VALERO mark because it is comprised of the VALERO mark in its entirety, plus the addition of the generic word “card” and the generic Top-Level Domain extension “.com”.
The Complainant further alleges that the Respondent has no rights or legitimate interests in the Domain Name.
The Complainant finally alleges that there is evidence of Respondent’s bad faith registration and use. Notwithstanding the Respondent’s knowledge of the fame of the VALERO mark, the Respondent intentionally registered, for commercial gain, the Domain Name that is comprised of the Complainant’s trademark. Moreover, the Respondent has been subject of a number of UDRP proceedings before WIPO, which shows a pattern of bad faith on the side of the Respondent.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant is the owner of a number of VALERO marks registered in the United States, including US Registration No. 1,314,004, US Registration No. 2,560,091, US Registration No. 2,656,971, and US Registration No. 3,108,715. The Panel concludes that the Complainant has established trademark rights over the VALERO mark.
The Panel does not consider “.com” being a generic Top-Level extension would give any distinctiveness to the Domain Name and consequently it could be disregarded for the purpose of this proceeding. The most dominant part of the Domain Name is thus “valerocard”, comprised of “valero” which is identical to the Complainant’s VALERO mark, and a generic word “card”.
The Complainant actually offers retail credit cards allowing its consumers to purchase gasoline and other goods and services. The Panel thus holds that addition of the generic word “card” is insufficient to eliminate the confusing similarity between the Domain Name and the Complainant’s VALERO mark, but instead reinforces such confusion in that the word “card” directly relates to the Complainant’s business.
The Panel determines that the Domain Name is confusing similar to the Complainant’s VALERO mark and the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has asserted that the Respondent has not been licensed by it to use the VALERO trademark or to act on behalf of the Complainant. The Respondent did not rebut such assertions by the Complainant.
After reviewing the screenshot of the website located at the Domain Name produced by the Complainant, the Panel holds that by popping up warnings of detection of security error or viruses, the website associated with the Domain Name was attempting to induce Internet visitors to call a toll-free number for online technical support, which in fact may be likely to promote malware removal software or any other products or services unrelated to the Complainant. The Panel agrees that such use of the Domain Name which incorporates the Complainant’s trademark, does not constitute a bona fide offering of goods and services under the Policy.
The Respondent does not appear to be commonly known by the Domain Name. The Respondent failed to respond in this proceeding to rebut contentions of the Complainant. The Panel thus concludes that the Respondent has no rights or legitimate interests in respect of the Domain Name.
The Panel determines that Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant’s VALERO marks have been registered for over 30 years, with one VALERO mark registered as early as in the year of 1982. The fame of the Complainant and its mark may be demonstrated by Fortune magazines which have identified the Complainant to be a Fortune 500 company for years.
Given the notoriety of the Complainant and its VALERO mark, it would be quite unreasonable to make a finding that the Respondent had no actual notice of the Complainant’s VALERO trademark at the time of registering the Domain Name. The Respondent was rather more likely than not well aware of the VALERO mark at the time of the registration of the domain name, by combining the widely known VALERO trademark with the generic word “card” that reflects the Complainant’s business. The Respondent’s intentional registration of the Domain Name suggests opportunistic bad faith registration.
The Respondent was once using the Domain Name to divert Internet visitors to a website that popped up security warnings and then attempted to induce them to call a toll-free number for online technical support. The number could be used to promote malware removal software, or even worse, for phishing purpose including obtaining credit card information from these Internet visitors. The Panel holds that the Respondent, by using the Domain Name, is trying to profit from the diversion of Internet visitors by confusion between the Domain Name and the Complainant, in order to attract, for commercial gain, Internet visitors to the corresponding website under the Domain Name, by creating a likelihood of confusion with the Complainant and the VALERO trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of a product or service on the Respondent’s website.
Moreover, the Respondent has been named in numerous UDRP cases. The Respondent apparently has been engaged in a pattern of registering and using domain names containing well-known third party trademarks in bad faith.
The Panel determines that the Domain Name was registered and is being used in bad faith by the Respondent. The Complainant has satisfied the requirements of 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, <valerocard.com>, be transferred to the Complainant.
Date: April 30, 2015