WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Valero Energy Corporation and Valero Marketing and Supply Company v. Michael Don

Case No. D2017-1151

1. The Parties

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

The Respondent is Michael Don of Kano, Nigeria.

2. The Domain Name and Registrar

The disputed domain name <valeroenerg.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 June 13, 2017. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 14, 2017, 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.

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 June 22, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 12, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 13, 2017.

The Center appointed Erica Aoki as the sole panelist in this matter on July 18, 2017. 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 in this administrative proceeding are Valero Energy Corporation and Valero Marketing and Supply Company, a wholly owned subsidiary of Valero Energy Corporation (hereinafter together referred to as the "Complainant").

The Complainant has continuously used the VALERO mark in commerce for at least 31 years in connection with its oil and gas exploration, production and distribution services, and owns inter alia the United States trademark VALERO, Registration No. 1,314,004, registered on January 8, 1985. The Complainant has spent tens of millions of dollars in advertising, marketing, and promoting the VALERO brand in the United States and throughout the world, in a wide variety of media formats, including print, television, radio, Internet, billboards, and signage, among others.

As a result of the Complainant's significant monetary investment and continuous use of its VALERO trademarks to advertise, market and promote the VALERO brand over more than three decades, the trademarks have developed extensive goodwill and favorable consumer recognition.

The Complainant has continuously owned and operated a website under the domain name <valero.com> for many years, and utilizes that domain name for company email addresses through which it communicates internally, with customers, vendors, and the public in general.

The disputed domain name was registered by the Respondent on April 3, 2017. At the time of the filing of the Complaint, the disputed domain name did not resolve to an active website.

5. Parties' Contentions

A. Complainant

The Complainant Valero Energy Corporation, a Fortune 50 company based in San Antonio, Texas, is an international manufacturer and marketer of transportation fuels and other petrochemical products with approximately 10,000 employees. Its assets include 15 petroleum refineries with a combined throughput capacity of approximately 3.1 million barrels per day and 11 ethanol plants with a combined production capacity of approximately 1.4 billion gallons per year. The petroleum refineries are located in the United States, Canada and the United Kingdom, and the ethanol plants are in the Mid-Continent region of the U.S.

The Complainant Valero Marketing and Supply Company refines and markets crude oil in the United States and internationally. Its refining activities include refining operations, wholesale marketing, product supply and distribution, and transportation operations primarily in the Gulf Coast, Mid-Continent, West Coast, and northeast regions. The company was founded in 1981 and is based in San Antonio, Texas. Valero Marketing and Supply Company operates as a subsidiary of Valero Energy Corporation.

The Complainant contends that the disputed domain name is confusingly similar to the Complainant's trademark since it is comprised of the Complainant's VALERO mark in its entirety, plus an abbreviation of the term "energy", along with the generic Top-Level Domain extension. The Respondent's disputed domain name is confusingly similar to the Complainant's mark under the Policy, paragraph 4(a)(i).

Furthermore, the Complainant contends that the Respondent has no rights or legitimate interests in relation to the disputed domain name. The Respondent is not affiliated or related to the Complainant in any way, or licensed or otherwise authorized to use the Complainant's mark in connection with a website or for any other purpose. The Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services, is not generally known by the disputed domain name, and has not acquired any trademark or service mark rights in that name or mark. 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; the Complainant has not licensed to the Respondent the right to use the VALERO mark; and the Respondent is not otherwise authorized to act on the Complainant's behalf.

According to the Complainant, the Respondent is engaged in an elaborate, criminal scheme utilizing an advanced fee scam in connection with a fraudulent crude oil trading scheme. The Respondent is using the disputed domain name to impersonate the Complainant's Vice President by sending out emails in his name showing an email address created under the disputed domain name, designed to persuade the victim to send advance payments to the Respondent in connection with a fraudulent (non-existent) transaction.

B. Respondent

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

6. Discussion and Findings

In order for the Complainant to obtain the transfer of the disputed domain name, it has to satisfy the following requirements specified under paragraph 4(a) of the Policy:

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

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Based on the facts presented by the Complainant, the Panel finds that the disputed domain name is confusingly similar to a mark in which the Complainant has rights, as required under paragraph 4(a)(i) of the Policy. The Panel finds that the disputed domain name is confusingly similar to the Complainant's registered trademark, as the disputed domain name consists of the Complainant's VALERO mark plus "energ", the abbreviation of energy.

Accordingly, the Panel finds that the Complainant has satisfied the first element of the Policy.

B. Rights or Legitimate Interests

The Panel finds the following on the record in this proceeding:

- The Respondent is in default and thus has made no affirmative attempt to show any rights or legitimate interests in the disputed domain name;

- The Respondent is in no way connected with the Complainant and has no authorization to use any of the Complainant's trademarks; and

- There is no evidence that the Respondent is or was commonly known by the disputed domain name as an individual, business or other organization.

Thus, in the Panel's view, the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. There is no evidence of the Respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.

Further, the Panel notes that the Respondent has not used the disputed domain name in connection with a legitimate noncommercial or fair use activity.

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

C. Registered and Used in Bad Faith

The Complainant contends that the Respondent has registered and used the disputed domain name in bad faith.

The Panel notes the Complainant's submission that the disputed domain name has been used in relation to a fraud scheme. The Complainant has provided evidence of an email purportedly sent by the Complainant's Vice President, showing an email address using the disputed domain name. This constitutes bad faith registration and use under the Policy.

Further the Complainant contends that the bad faith by non-use of the disputed domain name for a website is well established that is not limited to positive action and inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity in terms of website content by the Respondent to amount to the domain name being used in bad faith.

Also, the Complainant contends that the Respondent has provided false contact information to the Registrar in an attempt to conceal his or her true identity, both of which contribute to bad faith under the UDRP. Home Director, Inc. v. HomeDirector, WIPO Case No. D2000-0111 (finding bad faith use and registration where Respondent used "false and misleading information in connection with the registration of the Domain Name"); Yahoo!, Inc. v. Eitan Zviely, WIPO Case No. D2000-0273 (finding that "[Respondent's] registrations under phony names" is evidence of bad faith registration and use). While the record is not clear on this, the Respondent has not come forward to rebut these claims.

Accordingly, the Panel finds that the Respondent registered and is using 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 <valeroenerg.com> be transferred to the Complainant.

Erica Aoki
Sole Panelist
Date: July 27, 2017