WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Valero Energy Corporation and Valero Marketing and Supply Company v. WhoisGuard Protected / Ogwo Ud

Case No. D2018-0649

1. The Parties

The Complainant is Valero Energy Corporation and Valero Marketing and Supply Company of San Antonio, Texas, United States of America, represented by Fasthoff Law Firm PLLC, United States of America.

The Respondent is WhoisGuard Protected of Panama, Panama / Ogwo Ud of Enugu, Nigeria.

2. The Domain Name and Registrar

The disputed domain name <vallerro.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 23, 2018. On March 23, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 23, 2018, 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 March 26, 2018 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 March 27, 2018.

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 the Respondent of the Complaint, and the proceedings commenced on March 29, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 18, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 19, 2018.

The Center appointed Benoit Van Asbroeck as the sole panelist in this matter on April 23, 2018. 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 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 (herein jointly referred to as the “Complainant”).

The Complainant is the owner of a number of trademarks registered in the United States for the word trademarks VALERO, V VALERO and VALERO V (herein jointly referred to as the “Trademarks”). The earliest of these registered Trademarks was registered in 1985 and first used in 1983. These registrations collectively cover a number of goods and services connected with the oil and gas field and include:

- United States trademark with registration No. 1314004 registered on January 8, 1985 in International Class 42;

- United States trademark with registration No. 2560091 registered on April 9, 2002 in International Class 35;

- United States trademark with registration No. 2656971 registered on December 3, 2002 in International Classes 35 and 37;

- United States trademark with registration No. 2656973 registered on December 3, 2002 in International classes 35 and 37;

- United States trademark with registration No. 3688322 registered on September 29, 2009 in International Class 40;

- United States trademark with registration No. 2938790 registered on April 5, 2005 in International Class 36;

- United States trademark with registration No. 4216650 registered on October 2, 2012 in International Class 36;

- United States trademark with registration No. 2927757, registered on February 22, 2005 in International Class 4;

- United States trademark with registration No. 3108715, registered on June 27, 2006 in International Class 35;

Additionally, the Complainant is also the registrant of the domain name <valero.com>, which it uses for company email addresses through which it communicates internally, with customers, vendors and the public in general.

The disputed domain name <vallerro.com> was registered on December 7, 2017, well after the Complainant secured rights to the Trademarks. According to evidence provided by the Complainant, the disputed domain name has been used in connection with a phishing scam.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows.

(a) The disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant contends that the disputed domain name is confusingly similar to the registered rights in which the Complainant has rights. By reproducing the Complainant’s VALERO trademark in its entirety with the addition of a second “l” and a second “r”, the disputed domain name is confusingly similar to the Complainant’s trademark under paragraph 4(a)(i) of the Policy.

(b) The Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant asserts that it has rights in the VALERO trademark and 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 or fair use of the disputed domain name. Additionally, the Complainant has never licensed or in anyway authorised the Respondent to use the disputed domain name and to act on the Complainant’s behalf.

The Complainant states that the Respondent has been engaged in an elaborate criminal scheme and sets out the relevant supporting documents, which involves a phishing site collecting personal identification information from victims and persuading them to send money to the Respondent in connection with a job offer scam.

(c) The disputed domain name was registered and is being used in bad faith.

The Complainant notes that it has used the VALERO trademark for more than 30 years and that at the time that the disputed domain name was registered on December 7, 2017, the Complainant was listed as the 37th largest company in the United States.

The Complainant asserts that, at the time of registration of the disputed domain name, the Respondent undoubtedly knew the Complainant’s prominence in the business world and that the Respondent has intentionally registered for commercial gain the disputed domain name which is comprised of the Complainant’s VALERO trademark.

Additionally, the Complainant contends that bad faith can also be deducted from the above-mentioned criminal conduct perpetrated by the Respondent.

Relying on Home Director, Inc. v. HomeDirector, WIPO Case No. D2000-0111, the Complainant further argues that bad faith can be inferred from the fact that the disputed domain name was registered with false contact information in an attempt to conceal the Respondent’s true identity.

The Complainant moreover asserts that the Respondent has registered the disputed domain name to prevent the Complainant from registering a domain name that reflects its VALERO trademark.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant is required to establish the two following elements: (1) that it has trademark rights, and, if so, (2) that the disputed domain name is identical or confusingly similar to its trademark(s).

First of all, this Panel finds that the Complainant has clearly evidenced that it has registered trademark rights in the VALERO trademark.

Secondly, the disputed domain name differs from the Complainant’s VALERO trademark merely by the addition of the second “l” and the second “r”. In the view of the Panel, the addition of two simple letters does not influence the overall impression of the disputed domain name and the trademark as confusingly similar as there are only minor differences in the appearance and pronunciation.

On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, this Panel finds and concludes that the disputed domain name is confusingly similar to the Complainant’s VALERO trademark.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads:

“When you receive a complaint, you should refer to paragraph 5 of the Rules of Procedure in determining how your response should be prepared. 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 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.”

This Panel finds that there is no evidence that the Respondent has any rights or legitimate interests in the disputed domain name.

It is a well-established view of the UDRP panels, with which this Panel agrees, that a prima facie case advanced by the complainant is generally sufficient for the complainant to satisfy the requirements under paragraph 4(a)(ii) of the Policy, provided that the respondent does not submit any evidence to the contrary (AGUAS DE CABREIROA, S.A.U. v. Hello Domain, WIPO Case No. D2014-2087; Spigen Korea Co., Ltd., Spigen Inc. v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2016-0145; HubSpot, Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Steve Johnson, WIPO Case No. D2016-1338).

In the present case, taking into consideration the default of the Respondent, this Panel finds that the Complainant has submitted a sufficient prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, in view of the circumstances of this case, including the following factors:

- there is no evidence that the Respondent has been commonly known by the disputed domain name;

- there is no evidence that the Respondent has used or prepared to use 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 been licensed or authorized to use the disputed domain name by the Complainant.

In fact, the evidence shows that the disputed domain name has been associated with criminal conduct to cause confusion with the Complainant.

For all the foregoing reasons, this Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by this Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy reads:

“For the purposes of paragraph 4(a)(iii), 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 a domain name in bad faith:

(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

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; 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.”

Each of the four circumstances in paragraph 4(b) of the Policy, if found, would be an instance of “registration and use of a domain name in bad faith.”

First of all, with regard to the Respondent’s registration of the disputed domain name, this Panel believes bad faith may be found where the Respondent knew or should have known of the registration and use of the VALERO trademark prior to registering the disputed domain name. Such is true in the present case in which the Respondent registered the disputed domain name after the Complainant obtained its trademark registrations for the VALERO trademark. The longstanding and public use of the VALERO trademark makes it disingenuous for the Respondent to claim that he was unaware that the registration of the disputed domain name would violate the Complainant’s rights.

Based on the circumstances here, the Panel finds that the Respondent used the disputed domain name in bad faith by attempting to attract for commercial gain job seekers to the Respondent’s website by creating a likelihood of confusion with the Complainant’s VALERO trademark.

Additionally, given the undisputed allegations of the Complainant, the Respondent has used the disputed domain name in connection with a phishing scam. Phishing is the criminally fraudulent process of attempting to acquire sensitive information such as usernames, passwords and credit card details by masquerading as a trustworthy entity in an electronic communication. By using the disputed domain name to make fraudulent requests to third parties seeking financial information, it is obvious that the Respondent specifically targeted the Complainant and its VALERO trademark, and has done so opportunistically and deliberately. There are numerous previous UDRP decisions which have held that the registration and the use of a domain name in connection with a fraudulent “phishing” scheme constitutes bad faith under the Policy (see Pfizer Inc v. Michael Chucks / Whoisguard Protected, Whoisguard Inc, WIPO Case No. D2014-0887). The Panel agrees with that view.

The Complainant further submits that it is well-settled that the provision of false or inaccurate information when registering a domain name (as is the present case) is further evidence of bad faith (see Mrs. Eva Padberg v. Eurobox Ltd., WIPO Case No. D2007-1886; Association Robert Mazars v. INTEG Kumaran, WIPO Case No. D2009-1679; and A. H. Belo Corporation v. King TV and 5 Kings, WIPO Case No. D2000-1336). The Panel endorses that view.

In light of the foregoing, this Panel finds that the disputed domain name was registered and is being used by the Respondent in bad faith under the Policy.

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 <vallerro.com> be transferred to the Complainant.

Benoit Van Asbroeck
Sole Panelist
Date: May 7, 2018