WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Valero Energy Corporation and Valero Marketing and Supply Company v. Valero Energy

Case No. D2017-0316

1. The Parties

The Complainants are Valero Energy Corporation and Valero Marketing and Supply Company of San Antonio, Texas, United States of America (the "United States"), represented by Fasthoff Law Firm PLLC, United States.

The Respondent is Valero Energy of Bayselya, Nigeria.

2. The Domain Name and Registrar

The disputed domain name <valerro.com> (the "Disputed 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 February 16, 2017. On February 17, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 20, 2017, 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 and 4, the Center formally notified the Respondent of the Complaint and the proceedings commenced on March 1, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 21, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 23, 2017.

The Center appointed Michael Cover as the sole panelist in this matter on April 13, 2017. 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, and Valero Marketing and Supply Company, which is a wholly-owned subsidiary of Valero Energy Corporation.

Each of the Complainants is the proprietor of various US registered trademarks which consist or incorporate the element VALERO. The earliest of these registered trademarks was registered in 1985 and first used in 1983. These registered trademarks are registered for a range of goods and services, which include oil and gas exploration, production, processing and distribution services, automobile service station services and gasoline and diesel fuel.

The Disputed Domain Name was registered on October 3, 2016, and does not resolve to any active website.

5. Parties' Contentions

A. Complainant

Identical or confusingly similar

The Complainants submit that the Disputed Domain Name is confusingly similar to the Complainants' VALERO trademarks. The Complainants state that they have spent millions of US Dollars advertising, marketing and promoting the trademark VALERO, which has been in continuous use for at least 31 years. The Complainants submit that the trademark VALERO has developed extensive goodwill and favourable consumer recognition.

The Complainants also state that they have continuously owned and operated a website under the name <valero.com> for many years. This domain name is actually registered to Valero Energy, which the Panel has taken to be Valero Energy Corporation. The Complainants also note that previous panels have previously determined that the Complainant, as it is called in the Complaint, has rights in the trademark VALERO and that this trademark is both distinctive and famous within the meaning of US law. The Complainants cite various previous UDRP decisions in support of their contention and the Panel notes that these decisions all refer to complaints brought by Valero Energy Corporation.

The Complainants submit that the Disputed Domain Name is confusingly similar to the trademark VALERO and that the requirement of the Policy's first point is met. The Complainants note that the only difference between the trademark VALERO and the Disputed Domain Name is the addition of an "r" to the word "Valero" and that this clearly represents a typographical error.

Rights or Legitimate Interests

The Complainants submit that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. In particular, the Respondent has not at any time been commonly known by the Disputed Domain Name, has not used or made demonstrable preparations to use the Disputed Domain Name and is not making a legitimate noncommercial of fair use of the Disputed Domain Name. The Complainants also note that the Complainants have not licensed the Respondent to use the trademark VALERO and that the Respondent is not otherwise authorized to act on the Complainants' behalf.

The Complainants state that the Respondent has been engaged in an elaborate criminal scheme and sets out the relevant supporting document in Annex 5 to the Complaint, which involves the impersonation of a key employee of the Complainants. The Disputed Domain Name also resolves to what the Complainants state is a "dead site".

The Complainants conclude that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

Registered and Used in Bad Faith

The Complainants submit that the Disputed Domain Name has been registered and is being used in bad faith.

The Complainants note that they have used the trademark VALERO for more than 30 years and that, at the time that the Disputed Domain Name was registered on October 3, 2016, one of the Complainants was listed as the 32nd largest company in the USA.

The Complainant continues that the Respondent must have been aware of the Complainants' prominence in the business world when it registered the Disputed Domain Name and that the Respondent has intentionally registered for commercial gain the Disputed Domain Name which is comprised of the Complainants' trademark VALERO.

The Complainant notes what it calls the criminal conduct of the Respondent and also the lack of a website at the Disputed Domain Name and that the Respondent has registered a domain name that prevents the Complainants from registering the variation of its trademark that constitutes "Valerro".

The Complainants conclude that the Disputed Domain Name has been registered and is being used in bad faith.

Remedy Requested

The Complainants request that the Panel order that the Disputed Domain Name be transferred to what is referred to as the Complainant.

B. Respondent

The Respondent did not reply to the Complainants' contentions.

6. Discussion and Findings

The Complainants must demonstrate on the balance of probabilities that the Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainants have rights, that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and that the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel accepts that the Complainant Valero Energy Corporation (the "First Complainant"), has established that it has rights in the trademark VALERO. The First Complainant has registered rights in its trademark.

The Panel also accepts the Complainants' submission that the Disputed Domain Name is confusingly similar to its trademark VALERO. It is well established that the addition of a generic Top-Level Domain ("gTLD") or other non-distinctive element is not sufficient to avoid confusing similarity. The addition of the letter "r" also does not impact the Panel's assessment, as it does not alter the overall visual effect of the Disputed Domain Name and certainly does not affect the pronunciation of the Disputed Domain Name.

The Panel accordingly finds that the Disputed Domain Name is confusingly similar to the First Complainant's trademark VALERO, and that paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

The Panel accepts that the Respondent has no rights or legitimate interests in the Disputed Domain Name. In particular, the Panel accepts that the Complainants have not authorized or licensed the Respondent to use the trademark VALERO and that the Respondent is not affiliated to the Complainants. This is compounded by the fact that the Respondent appears to style itself "Valero Energy", which comprises a substantial part of the corporate name of the First Complainant.

It is a reasonable inference that the Respondent was aware of the existence of the Complainants when it registered the Disputed Domain Name. There is no evidence that legitimate noncommercial or fair use of the Disputed Domain Name has taken place. There is no evidence that the Respondent has used or prepared to use the Disputed Domain Name before this dispute arose and nor is there any evidence that the Respondent was commonly known by the Disputed Domain Name and so those two gateways are denied to the Respondent. In fact, the evidence shows that the Disputed Domain Name has been associated with fraudulent activity to cause confusion with the Complainants.

The Panel accordingly finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and that paragraph 4(a)(ii) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

The Panel accepts the submissions of the Complainant on this aspect and finds that the Disputed Domain Name has been registered and is being used in bad faith.

There is a submission by the Complainants that the Respondent has been making fraudulent use of the Disputed Domain Name and, on the balance of probabilities, the Panel accepts that this has been the case. This constitutes registration and use in bad faith in the circumstances of the case.

The Panel finds that the Respondent has registered and is using the Disputed Domain Name in bad faith and that paragraph 4(a)(iii) of the Policy has been satisfied.

7. Decision

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, <valerro.com> be transferred to the Complainants.

Michael D Cover
Sole Panelist
Date: April 27, 2017