WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

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

Case No. D2021-1570

1. The Parties

Complainants are Valero Energy Corporation and Valero Marketing and Supply Company, both from the United States of America (the “United States”), represented by Fasthoff Law Firm PLLC, United States. Valero Energy Corporation and Valero Marketing and Supply Company are individually and collectively referred to herein as “Complainant”.

Respondent is Dennis Neil, United States of America.

2. The Domain Name and Registrar

The disputed domain name <val-ero.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 May 19, 2021. On May 20, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 20, 2021, 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 Complainant on May 31, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on June 1, 2021.

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 Respondent of the Complaint, and the proceedings commenced on June 2, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 22, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 26, 2021.

The Center appointed Bradley A. Slutsky as the sole panelist in this matter on July 19, 2021. 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

Complainant is a petroleum refiner and renewable fuels producer and has a number of service mark and trademark registrations for the VALERO, VALERO V, and V VALERO marks, with dates of first use dating back to at least 1983, including, for example, United States Reg. No. 1,314,004 for VALERO, registered on January 8, 1985. The disputed domain name <val-ero.com> was registered on May 1, 2021. Complainant has provided evidence that the disputed domain name redirects to Complainant’s primary website and that the disputed domain name has been used in connection to fraudulent email schemes.

5. Parties’ Contentions

A. Complainant

Complainant asserts that it has been using the VALERO mark for more than 30 years, and has spent tens of millions of dollars in advertising, marketing, and promoting the VALERO brand in the United States and throughout the world. Complainant asserts that the disputed domain name is confusingly similar to the VALERO, VALERO V, and V VALERO marks as it is comprised of the VALERO mark with a hyphen in the middle of the mark and with the “.com” generic Top‑Level Domain (“gTLD”) appended to the end.

Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name in that Respondent has never been commonly known by the disputed domain name, has not used or made demonstrable preparations to use the disputed domain name, is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain, has not licensed the VALERO mark, and is not otherwise authorized to act on Complainant’s behalf. Instead, Complainant asserts that Respondent “[…] is engaged in [a] fraudulent phishing scheme whereby he sends emails to unsuspecting third parties pretending to be a Valero employee who wants to acquire various items with purchase orders”.

Complainant further asserts that Respondent “[…] has set up the infringing domain name to resolve to Valero’s actual home page in an effort to make Respondent appear to be associated with Complainant.”

Complainant asserts that “At the time the domain name was registered on May 1, 2021, Complainant was listed as the 37th largest company in the United States according to Fortune magazine”, and that Respondent was aware of Complainant’s VALERO mark when Respondent registered the disputed domain name, and thus, Respondent intentionally registered the disputed domain name for commercial gain.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Pursuant to paragraph 15(a) of the Rules, a panel in UDRP proceedings “shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

Under paragraph 4(a) of the Policy, Complainant must prove the following:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) 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

Under paragraph 4(a)(i) of the Policy, Complainant must show that the disputed domain name is “identical or confusingly similar to a trademark or service mark in which Complainant has rights”.

Complainant’s trademark registrations in the Annexes to the Complaint demonstrate that Complainant has rights in the VALERO mark.

The disputed domain name consists of the VALERO mark with a hyphen between the “l” and the “e”, plus the “.com” gTLD. Generally, “where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”. WIPO Overview of Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. The addition of a hyphen in the middle of Complainant’s mark and the addition of the “.com” gTLD does not prevent a finding of confusing similarity. See AB Electrolux v. Obama Clinton, WIPO Case No. D2021-0876 (“The disputed domain name is otherwise identical with the Complainant’s trademark, with the exception that the words ‘electro’ and ‘lux’ are separated by a hyphen. This is merely a meaningless addition to the Complainant’s trademark and as such insufficient to remove similarity between the Complainant’s trademark and the disputed domain name.”); WIPO Overview 3.0, section 1.11.1 (“The applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.”).

Accordingly, the Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights, and that paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Complainant also must demonstrate that Respondent has “no rights or legitimate interests in respect of the domain name”, paragraph 4(a)(ii) of the Policy.

“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 [Respondent’s] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to [Respondent] of the dispute, [Respondent’s] 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) [Respondent] (as an individual, business, or other organization) ha[s] been commonly known by the domain name, even if [Respondent has] acquired no trademark or service mark rights; or

(iii) [Respondent is] 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.” Policy, paragraph 4(c).

There is no evidence that Respondent was making a bona fide use of the disputed domain name before receiving notice of this dispute, or that Respondent has been commonly known by the disputed domain name, or that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. Rather, Complainant asserts that Respondent is using the disputed domain name to engage in phishing in order to defraud others out of merchandise, and attaches to the Complaint an email message from an email account associated with the disputed domain name seeking to purchase truckloads of motor oil and 1,000 spark plugs in exchange for a supposed Valero purchase order. Notably, although the “From” line of the email indicates it is from an employee at “val-ero.com”, the electronic signature at the bottom of the email indicates it is from an employee at “Valero Energy Corporation” (without a hyphen). Complainant thus asserts that Respondent has no rights or legitimate interests in the disputed domain name, has never been commonly known by the disputed domain name, has not used or made demonstrable preparations to the disputed domain name, is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain, and has not licensed the VALERO mark and is not otherwise authorized to act on Complainant’s behalf.

These allegations make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, which Respondent has not rebutted. See, e.g., Skyscanner Limited v. Mohan Pillai, WIPO Case No. D2020-3172 (finding a lack of rights or legitimate interests where “Respondent has not been authorized to use the Complainant’s mark, and there is no indication that the Respondent has been commonly known by the disputed domain name within the contemplation of paragraph 4(c)(ii) of the Policy”, and where Respondent allegedly “used the disputed domain name to commit business impersonation fraud, selling non-existent flight tickets to unsuspecting consumers”); Diamond Hill Investment Group, Inc. v. Richard Stroud, WIPO Case No. D2016-0510 (“Complainant asserts that the Domain Name resolves to a website that is a virtually identical copy of Complainant’s website and that this website is being operated to further a possible criminal enterprise. Respondent has not submitted any response to rebut these allegations. The Panel finds that the use of the Domain Name to divert Internet traffic to a scam or a phishing scheme is not a bona fide offering of goods or services.”); ConAgra Foods RDM, Inc. v. Mark Berry, WIPO Case No. D2013-0240 (“The use of a domain name for a phishing scam does not give rise to rights or legitimate interests in a domain name”); WIPO Overview 3.0, section 2.13.1 (“Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent.”).

Accordingly, the record supports a conclusion that Respondent has no rights or legitimate interests in respect of the disputed domain name, and that paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

Complainant also bears the burden of establishing that the “domain name has been registered and is being used in bad faith”. Policy, paragraph 4(a)(iii). As set forth in the Policy, paragraph 4(b):

“[T]he 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 [Respondent has] registered or [Respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to [C]omplainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of [Respondent’s] documented out‑of‑pocket costs directly related to the domain name; or

(ii) [Respondent has] 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 [Respondent has] engaged in a pattern of such conduct; or

(iii) [Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] web site or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] website or location or of a product or service on [Respondent’s] website or location.”

“Given that the scenarios described in UDRP paragraph 4(b) are non-exclusive and merely illustrative, even where a complainant may not be able to demonstrate the literal or verbatim application of one of the above scenarios, evidence demonstrating that a respondent seeks to take unfair advantage of, abuse, or otherwise engage in behavior detrimental to Complainant’s trademark would also satisfy Complainant’s burden.” WIPO Overview 3.0, section 3.1.

Complainant asserts that Respondent is using the disputed domain name to engage in a “fraudulent phishing scheme whereby he sends emails to unsuspecting third parties pretending to be a Valero employee who wants to acquire various items with purchase orders”, and attaches to the Complaint an example of such an email. Respondent has not sought to controvert these allegations.

As noted in the WIPO Overview 3.0, section 3.4, “Panels have held that the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending email, phishing, identity theft, or malware distribution. (In some such cases, the respondent may host a copycat version of the complainant’s website.) Many such cases involve the respondent’s use of the domain name to send deceptive emails, e.g., to obtain sensitive or confidential personal information from prospective job applicants, or to solicit payment of fraudulent invoices by the complainant’s actual or prospective customers.”

Consistent with the WIPO Overview, UDRP panels have found that similar schemes involving Complainant’s mark constituted bad faith. See, e.g., Valero Energy Corporation and Valero Marketing and Supply Company v. WhosiGuard Protected / Froedtert Health, WIPO Case No. D2020-2755 (finding bad faith where the Respondent used the domain name <valeroenergygroup.com> “to impersonate a purported employee of Complainant Valero Energy Corporation in an attempt to persuade a third party that Complainant Valero Energy Corporation is going to place an order for computer equipment with the third party. Respondent then, allegedly, directs the third party to send the computer equipment to Respondent”).

Given the long use of Complainant’s mark at the time Respondent registered the disputed domain name, and given the contents of the phishing email annexed to the Complaint, it is clear that Respondent knew of Complainant and Complainant’s mark at the time of registration, and unfairly sought to take advantage of Complainant’s mark through the registration and use of the disputed domain name.

Accordingly, the Panel finds that the record supports a conclusion that the disputed domain name has been registered and is being used in bad faith, and that paragraph 4(a)(iii) of the Policy is 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, <val-ero.com>, be transferred to Complainant.

Bradley A. Slutsky
Sole Panelist
Date: August 2, 2021