WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Valero Energy Corporation, Valero Marketing and Supply Company v. Maurine flavour seafoods

Case No. D2013-1849

1. The Parties

The Complainant is Valero Energy Corporation, Valero Marketing and Supply Company of San Antonio, Texas, United States of America, represented by Adams and Reese LLP, United States of America.

The Respondent is Maurine flavor seafoods of Montreal, Quebec, Canada.

2. The Domain Name and Registrar

The disputed domain name <valero-energy.com> 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 October 29, 2013. On October 30, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 31, 2013, 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 for the disputed domain name. The name of the Registrar differed from the named Registrar in the Complaint. In response to a notification that the Complaint was administratively deficient, the Complainant filed an amended Complaint on November 6, 2013.

The Center verified that 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 6, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was November 26, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 26, 2013.

The Center appointed Pablo A. Palazzi as the sole panelist in this matter on December 3, 2013. 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 (jointly referred to as the “Complainant”).

The Complainant is the owner of a number of trademarks registered in the United States of America for the word mark VALERO. These registrations collectively cover a number of goods and services connected with the oil and gas field, including in particular oil and gas exploration, production, processing, and distribution services.

The Complainant has used trademarks comprising VALERO continuously in the United States for at least 31 years, has spent millions of US dollars in advertising, marketing and promoting the VALERO brand using print, television, radio, Internet, billboards and signage among other advertising media. The Complainant has operated a website at “www.valero.com” since at least 1996.

The disputed domain name was registered on February 25, 2013.

5. Parties’ Contentions

A. Complainant

The Complainant states that it has owned and continually used the VALERO trademarks in commerce for more than 30 years.

The disputed domain name is confusingly similar to the Complainant’s trademarks.

The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has never 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 without intent for commercial gain. The Complainant has not licensed to the Respondent the right to use the VALERO trademarks and the Respondent is not otherwise authorized to act on the Complainant’s behalf.

The Respondent has used the disputed domain name to engage in criminal and fraudulent activities. M. P[…] is the Corporate Vice President of Alternative Energy & Project Development in Complainant’s home office. Respondent has been impersonating Mr. P[…] to operate a sophisticated “419 scam” by contacting people who have applied for, or indicated an interest in, fictitious job openings posted by the Respondent on various job boards. The email address the Respondent has been using to perpetrate his/her scam is […]@valero-energy.com, and the Respondent uses that email address to extend “job offers” to unsuspecting victims. The Complainant attaches to the Complaint emails showing this use of the disputed domain name.

According to the Complainant, such a conduct described above does not constitute a bona fide offering of goods or services under Policy 4(c)(i) or a legitimate noncommercial or fair use under Policy 4(c)(iii).

According to the Complaint, at the time the Respondent registered the disputed domain name on February 25, 2013, the Complainant was listed as the 9th largest company in the United States of America according to Fortune magazine. The Complainant states to be also present on the Fortune 500 rankings since 2005. Due to these facts, the Complainant states that the Respondent was undoubtedly aware of the Complainant’s prominence in the business world when it registered the disputed domain name incorporating the Complainant’s trademark.

The Complainant states also that the Respondent’s use of the VALERO trademarks in the disputed domain name is intended to assist the Respondent in conducting criminal and fraudulent activities for financial gain by using the Complainant’s trademarks. The Respondent’s use of the disputed domain name creates a likelihood of confusion with trademarks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website and the goods and services advertised thereon.

Additionally, the Respondent provided false name and contact information to the Registrar when registering the disputed domain name. Upon information and belief the Complainant asserts that the name “Marine flavour seafoods” is a name fabricated by the true registrant and that the address in Montreal, Canada, furnished by the Respondent also appears to be an unverifiable address.

Finally, the Complainant states that the Respondent registered the disputed domain name <valero-energy.com> to prevent the Complainant from registering a domain name that reflects the VALERO trademark owned by the Complainant. Such conduct is evidence of bad faith under Policy paragraph 4(b)(ii).

The Complainant requests the transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to prove each and all of the following three elements in order to prevail in these proceedings:

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

To prove this element the Complainant must have trademark rights and the disputed domain name must be identical or confusingly similar to the Complainant’s trade or service mark.

The Complainant is the owner of the VALERO trademark, having registrations for VALERO as a trademark in the United States of America.

The disputed domain name consists of the VALERO trademark and the term “energy” separated by a hyphen. The addition of a generic word such as “energy” to a recognized trademark does not operate to prevent a finding of confusing similarity between the trade trademark and the disputed domain name. The term “energy” is closely associated with the Complainant’s business. An individual viewing the disputed domain name may be confused into thinking that the disputed domain name would refer to a site relating to the Complainant. The Panel finds that the disputed domain name is confusingly similar to the Complainant’s VALERO trademark.

Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

To succeed on this element, a complainant must make out a prima facie case that the Respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.

Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:

“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 disputed 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 disputed 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 disputed domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making legitimate noncommercial or fair use of the disputed 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)).

The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the disputed domain name or to seek the registration of any domain name incorporating the VALERO trademark. There is no evidence that the Respondent is commonly known by the disputed domain name or any similar name.

There is no evidence that the Respondent has used or made demonstrable preparations to use the disputed domain name in connection with a legitimate noncommercial use.

The Complainant has stated and the Respondent has not denied, that the disputed domain name was used to contact people who have applied for, or indicated an interest in, fictitious job openings posted by the Respondent on various job boards. The Respondent has used the disputed domain name to create an email account ([…]@valero-energy.com) impersonating M. P. […], a senior officer of the Complainant and to make job offers to these applicants. This type of use does not constitute a bona fide offering of goods or services.

The Complainant has established a strong prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has had an opportunity to rebut the presumption that it lacks rights or legitimate interests but has chosen not to do so.

The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

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

(i) circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the disputed domain name ; or

(ii) the Respondent has registered the disputed domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

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

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

The Panel finds that it is likely that the Respondent was aware of the Complainant and its reputation in the VALERO trademark at the time the disputed domain name was registered. According to the Complaint, the Complainant is listed as the 9th largest company in the United States of America according to Fortune magazine and is also present on the Fortune 500 rankings. In addition, the word “valero” is a coined word that has no meaning other than by reference to the Complainant. Furthermore, the addition of the term “energy” (clearly connected with the Complainant’s business) to the disputed domain name shows that the Respondent was aware of the Complainant’s trademarks at the time the disputed domain name was registered.

In addition, the use of the disputed domain name to create an email account used to offer fictitious job positions shows also bad faith registration and use. The Complainant submitted evidence of emails created under the disputed domain name (e.g. […]@valero-energy.com) sent from the Respondent purporting to be from a senior officer from the Complainant.

Paragraph 4(b) of the Policy provides a non-exhaustive list of examples of evidence of bad faith registration and use. It is the view of the Panel that this course of fraudulent conduct in impersonating the Complainant´s officers by using an email with the disputed domain name is direct evidence of the Respondent’s bad faith (see Monarch Airlines Limited v. Richard Nani, WIPO Case No. D2012-2484; La Française des Jeux v. MichaelE Wilkins, WIPO Case No. D2009-0898; MasterCard International Incorporated v. Dhe Jonathan Firm, WIPO Case No. D2007-0831 and Inter-Continental Hotels Corporation v. Louise Lane / WhoisGuard, WIPO Case No. D2012-2037).

Accordingly, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith under paragraph 4(a)(iii) of 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 <valero-energy.com> be transferred to the Complainant.

Pablo A. Palazzi
Sole Panelist
Date: December 17, 2013