The Complainants are Valero Energy Corporation and Valero Marketing and Supply Company of San Antonio, Texas, United States of America (“United States” or “US”), represented by Fasthoff Law Firm PLLC, United States.
The Respondent is Registration Private, Domains By Proxy LLC of Scottsdale, Arizona, United States / Valero Energy Coroporation of Aurora, Colorado, United States.
The disputed domain name <valeroenergyincorporation.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 18, 2017. On January 18, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 19, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on January 20, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on January 23, 2017.
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 January 25, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 14, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 16, 2017.
The Center appointed Richard G. Lyon as the sole panelist in this matter on March 6, 2017. The Panel finds that it was properly constituted and has jurisdiction to decide this matter.1 The Panel has submitted his Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Complainants and their affiliated companies are a major international oil group, headquartered in Texas (US) that holds a number of trademarks for VALERO, duly registered on the principal record of the United States Patent & Trademark Office (USPTO). The earliest of these submitted with the Complaint was issued in 1985. Its principal website is “www.valero.com”.
The Respondent registered the disputed domain name in September 2016, using a proxy service. Upon receipt of the Complaint the Registrar revealed that the actual registrant was named “Valero Energy Coroporation”, with an address in Colorado (US). When the Panel attempted to access this domain name, he received an error message: “The requested URL / was not found on this server. That’s all we know.” A screenshot submitted with the Complaint, dated January 17, 2017, yielded an identical message.
The Complainants contend that the disputed domain name is confusingly similar to the Complainants’ USPTO-registered VALERO marks; that the Respondent lacks rights or legitimate interests in the disputed domain name; and that the Respondent registered and used the disputed domain name in bad faith. According to the Complaint the Respondent used the disputed domain name in connection with “an elaborate, criminal scheme utilizing a Nigerian/419 advanced fee scam, in this case attempting to collect personal identifying information, and to persuade victims to wire money to Respondent in connection with an [sic] job offer scam.” Such use, according to the Complainants, is not legitimate and clearly indicative of bad faith.
The Complainant cites two additional bases for finding bad faith: the “warehousing” doctrine first articulated in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; and “the Respondent has registered a domain name that prevents Complainant from registering a domain name that embodies the VALERO® mark owned by Complainant.”
The Respondent did not reply to the Complainants’ contentions.
Before analyzing the Complaint under the three elements of paragraph 4(a) of the Policy, the Panel notes that, unlike civil litigation in the United States, the Respondent’s default does not constitute an admission of any matter alleged in the Complaint or automatically result in a decision in the Complainant’s favor. As pointed out by a UDRP panel in a default case with similar allegations, “The Complainant must provide evidence of all the elements of paragraph 4(a) of the Policy. As the decision to transfer or cancel a domain name may have serious consequences for the domain name holder, the evidence should be sufficient in all respects to support such a decision. The absence of a Response from the Respondent, as in this case, does not discharge the Panel from its duty to establish that the evidence is sufficient.” Endemol Netherland B.V v. David Williams, WIPO Case No. D2010-1728.
The Complainants have met its burden of proof under paragraph 4(a) of the Policy. The disputed domain name’s dominant feature, VALERO, is the Complainants’ USPTO-registered trademark. The addition of the words “energy” and “incorporation” does not prevent a finding of confusing similarity.
Having made its prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to demonstrate the contrary. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1. The Respondent has not submitted a response and the Panel can find no indication of any bona fide use of the disputed domain name. It appears that the disputed domain name has not been used at all for an active website, but for the only purpose of sending emails misrepresenting the Complainant in connection with phony employment offers, as discussed below.
The Complainants correctly argue that use of the disputed domain name for a scam demonstrates bad faith registration and use for Policy purposes. See, e.g., Terex Corporation v. Williams Sid, Partners Associate, WIPO Case No. D2014-1742; Endemol Netherland B.V v. David Williams, supra, both involving misleading imitation of the complainant in connection with alleged phishing schemes premised on bogus employment offers. Similar use for other fraudulent purposes also qualifies as bad faith.
The only reference in the case file to “a Nigerian/419 advanced fee scam” is the language of the Complaint. Nothing in the Complainants’ evidence refers to “Nigeria”, “419”, or a “fee scam” of any kind. The Complainant also alleges “All documents attached hereto that purport to contain the signature of [the misrepresented employee of the Complainant] or any other Valero employee, and all documents embodying Complainant’s Trademarks, are fake documents that contain unauthorized, infringing uses of Complainant’s Trademarks.” Though this allegation accuses the Respondent of criminal conduct, no proof in the record supports it, even though such evidence, if it exists, plainly lies within the Complainants’ control. A simple affidavit from the employee disclaiming any connection with documents bearing her name would have made this Panel’s job considerably easier.
The Annexes submitted with the Complaint do contain some evidence of Respondent’s use of the disputed domain name to misrepresent the Complainant in connection with phony employment offers: a letter purportedly from the Complainants’ vice president-human resources originating from an email address at the disputed domain name and attaching a blank job application form; an email from a third party who inquired of the Complainants about the legitimacy of the job offer referred to in that letter; providing the Registrar a name incorporating the dominant feature of the Complainants’ marks together with a misspelled “corporation” as part of the registration information; and the selection of a domain name with those marks, distinctive and well-known in the energy world, as its dominant feature. This uncontested proof is enough to demonstrate registration and use in bad faith. See CITGO Petroleum Corporation v. [name redacted], WIPO Case No. D2016-1410.
This brings this case within the example of evidence of bad faith in paragraph 4(b)(iv) 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 disputed domain name <valeroenergyincorporation.com> be transferred to the Complainants.
Richard G. Lyon
Sole Panelist
Date: March 15, 2017
1 Upon delivery of the couriered copy of the Complaint, addressed to the Respondent at the address listed in the Registrar's contact details, the Center received an email from a third party, advising that he had recently purchased the residence and that address and had "no knowledge" of the matters referenced in the Complaint. Because the copy of the Complaint sent by telefax was duly delivered there is no question that the Center properly discharged its duties under the Rules, paragraph 2(a), so the Panel has jurisdiction.