WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Valero Energy Corporation and Valero Marketing and Supply Company v. Desmond c Cole, icapital

Case No. D2015-1444

1. The Parties

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

The Respondent is Desmond c Cole, icapital of Lawrenceville, Georgia, United States.

2. The Domain Name and Registrar

The disputed domain name <valerro.net> (the “Disputed Domain Name”) is registered with Web4Africa Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 14, 2015. On August 17, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 20, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s 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 August 25, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 14, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 16, 2015.

The Center appointed Lynda M. Braun as the sole panelist in this matter on October 1, 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.

The Panel has determined that the language of the proceeding is English as the Registration Agreement is in English. Paragraph 11(a) of the Rules provides that “[u]nless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement […].”

4. Factual Background

The Complainants are Valero Energy Corporation, a company organized and existing under the laws of the state of Delaware and Valero Marketing and Supply Company, a wholly-owned subsidiary of Valero Energy Corporation. The Complainants are the owners of numerous United States federal trademark registrations, including the VALERO, VALERO ENERGY CORPORATION, V VALERO, and VALERO V marks (the “VALERO Marks”), as well as other trademark registrations comprising the term “Valero” for numerous goods and services such as oil and gas exploitation, automobile services, credit card services, and retail store services.

Specifically, the Complainants own United States Trademark Registration Nos. 1,314,004, 2,560,091, 2,656,971, 3,108,715, 2,656,973, 2,927,757, 2,938,790, and 3,688,322 for the VALERO Marks.

The Complainants have used the VALERO Marks for over three decades. During this time, the Complainants have expended considerable amounts of money to advertise, market, and promote the VALERO Marks in a wide variety of media formats, including print, television, radio, Internet, billboards, and signage, among others.

As a result of the Complainants’ significant monetary investment in and continuous use of the VALERO Marks, the VALERO Marks have developed extensive goodwill and favorable consumer recognition. The Complainants currently constitute the 13th largest company in the United States.

The Complainants have operated an Internet website under the domain name <valero.com> for many years, and use this domain name for company email addresses to communicate internally and also to communicate with customers, vendors, and the public in general.

The Respondent registered the Disputed Domain Name on June 16, 2015. The Respondent subsequently used the Disputed Domain Name in a scheme to advertise fraudulent job offers purporting to come from the Complainants. The Respondent collected the names, addresses, email addresses, telephone numbers, and passport numbers from unsuspecting victims who believed they were applying for employment. The Complainants submitted examples of the fraudulent job offers as an annex to their Complaint.¹

5. Parties’ Contentions

A. Complainants

The following are the Complainants’ contentions:

- The Disputed Domain Name is confusingly similar to the Complainants’ trademarks.

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

- The Disputed Domain Name was registered and is being used in bad faith.

- The Complainants seek the transfer of the Disputed Domain Name from the Respondent to the Complainants in accordance with paragraph 4(i) of the Policy.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the Complainants prove all of the following three elements in order to be successful in these proceedings:

(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and

(ii) the 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.

A. Identical or Confusingly Similar

This element consists of two parts: first, do the Complainants have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark.

It is uncontroverted that the Complainants have established rights in the VALERO Marks based on longstanding use as well as ownership of United States trademark registrations for the VALERO Marks.

The Disputed Domain Name consists of the VALERO Mark with an additional “r” and followed by the generic Top-Level Domain (“gTLD”) “.net”. The Disputed Domain Name <valerro.net> differs from the VALERO Marks merely by the addition of the letter “r” in the Disputed Domain Name. This repeated consonant does not significantly affect the appearance or pronunciation of the Disputed Domain Name. Numerous panels in the past have found similarity to be present in the case of a deliberate misspelling of a mark, referred to as “typosquatting”, by adding, deleting, substituting, or reversing the order of letters in a mark. See Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; United Feature Syndicate, Inc. v. Mr. John Zuccarini, WIPO Case No. D2000-1449.

Finally, the addition of a gTLD such as “.net” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether domain names are identical or confusingly similar to a trademark. Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.

Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainants.

B. Rights or Legitimate Interests

Under the Policy, a complainant may make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name at issue. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.

The Complainants have not authorized, licensed, or otherwise permitted the Respondent to use its VALERO Marks. The Complainants do not have any type of business relationship with the Respondent, nor is the Respondent making a legitimate noncommercial or fair use of the Disputed Domain Name. Instead, the Panel finds that the Respondent was improperly using the Disputed Domain Name for commercial gain. The only active use that the Respondent has made of the Disputed Domain Name was in a scheme to advertise fraudulent job offers purporting to come from the Complainants. The Respondent has also held the Disputed Domain Name passively. These uses do not give rise to rights or legitimate interests on the part of the Respondent. The Chase Manhattan Corporation et al. v. John Whitely, WIPO Case No. D2000-0346.

Finally, where a respondent has registered and used a domain name in bad faith (see the discussion below), the respondent cannot for that reason be found to have made a bona fide offering of goods or services.

In this case, the Panel finds that the Complainants have made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent has not submitted any substantive arguments or evidence to rebut the Complainants’ prima facie case.

Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainants.

C. Registered and Used in Bad Faith

This Panel finds that, based on the record, the Complainants have demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy.

First, bad faith may be found where the Respondent knew or should have known of the registration and use of the VALERO Marks prior to registering the Disputed Domain Name. Façonnable SAS v. Names4sale, WIPO Case No. D2001-1365. Such is true in the present case in which the Respondent registered the Disputed Domain Name after the Complainants obtained their trademark registrations for the VALERO Marks. The longstanding and public use of the VALERO Marks makes it disingenuous for the Respondent to claim that he was unaware that the registration of the Disputed Domain Name would violate the Complainants’ rights. See Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137 (finding bad faith where the respondent registered the domain name after the complainant established rights and publicity in the complainant’s trademarks).

The Respondent’s action of registering the Disputed Domain Name and using it in a scheme to advertise fraudulent job offers purporting to come from the Complainants and to collect the personal information of unsuspecting victims evidences a clear intent to disrupt the Complainants’ business, deceive customers, and trade off the Complainants’ goodwill by creating an unauthorized association between the Respondent and the Complainants’ VALERO Marks. See Banco Bradesco S.A. v. Fernando Camacho Bohm, WIPO Case No. D2010-1552.

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 Internet users to the Respondent’s website or other online location by creating a likelihood of confusion with the Complainants’ VALERO Marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. The Respondent’s registration and use of the Disputed Domain Name indicates that such registration and use was done for the specific purpose of trading on the name and reputation of the Complainants and their VALERO Marks. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847 (“[t]he only plausible explanation for Respondent’s actions appears to be an intentional effort to trade upon the fame of Complainant’s name and mark for commercial gain” and “[t]hat purpose is a violation of the Policy, as well as U.S. Trademark Law”.).

Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainants.

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.net> be transferred to the Complainants.

Lynda M. Braun
Sole Panelist
Date: October 5, 2015

¹ As of the writing of this decision the Disputed Domain Name does not resolve to any active website.