Valero Energy Corporation and Valero Marketing and Supply Company v. Francis Broaddus
Claim Number: FA1412001593015
Complainant is Valero Energy Corporation and Valero Marketing and Supply Company (“Complainant”), represented by Henry J. Fasthoff, IV of Fasthoff Law Firm PLLC, Texas, USA. Respondent is Francis Broaddus (“Respondent”), Oklahoma, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <valeroenergylng.us>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 2, 2014; the National Arbitration Forum received payment on December 2, 2014.
On December 4, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <valeroenergylng.us> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On December 5, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 26, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@valeroenergylng.us. Also on December 5, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on December 25, 2014.
On December 31, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant uses VALERO to promote its energy exploration business. The VALERO mark is registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,202,362, registered July 20, 1982). The <valeroenergylng.us> domain name is confusingly similar to the VALERO mark in that it merely adds the descriptive term “energy,” and the abbreviation “lng” (liquefied natural gas), with the ccTLD “.us.”
2. Respondent has no rights or legitimate interests in the <valeroenergylng.us> domain name. Respondent is not commonly known as the <valeroenergylng.us> domain name. Respondent is listing the domain name up for auction, requesting $3,000.
3. Respondent registered and is using the <valeroenergylng.us> domain name in bad faith. Respondent seeks to sell of the domain names at a profit to Complainant. Respondent is a shareholder in Complainant and thus had actual knowledge of Complainant’s rights in the VALERO mark prior to registering and using the domain names.
B. Respondent
1. Respondent believes that Complainant should have paid him $2,000 cash instead of initiating this Complaint. Respondent is dissatisfied that his offer to sell was not accepted by Complainant. Respondent now requests Complainant buy the domain name for a new price of $8.00.
Complainant is Valero Energy Corporation and Valero Marketing and Supply Company of San Antonio, TX, USA. Complainant is the owner of the domestic registration for the mark VALERO and related variations embodying the mark. Complainant has used the mark continuously since at least as early as 1982 in connection with its provision of goods and services in the oil and gas industry.
Respondent is Francis Broaddus, of Tulsa, OK, USA. The Respondent’s registrar’s address is listed as Scottsdale, AZ, USA. The Panel notes that the <valeroenergylng.us> domain name was registered on or about May 12, 2014.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant uses VALERO to promote its energy exploration business. The VALERO mark is registered with the USPTO (e.g., Reg. No. 1,202,362, registered July 20, 1982). The Panel finds that this registration shows sufficient evidence of Policy ¶ 4(a)(i) rights in the mark. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
Complainant argues that the <valeroenergylng.us> domain name is confusingly similar to the VALERO mark in that it merely adds the descriptive term “energy,” and the abbreviation “lng” (liquefied natural gas), with the ccTLD “.us.” The Panel finds that neither the term “energy” nor the ccTLD add the required distinction needed to avoid a finding of Policy ¶ 4(a)(i) confusing similarity. See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). The Complainant has met this burden.
The Panel finds that there is no evidence to support the position that Respondent has a trade or service mark that is identical to the <valeroenergylng.us> domain name under Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name).
Complainant argues that Respondent is not commonly known as the <valeroenergylng.us> domain name. The Panel notes that Respondent identifies as “Brian Broaddus” in his e-mail Response. The Panel finds that Respondent is not commonly known by this domain name under Policy ¶ 4(c)(iii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant argues that Respondent is listing the domain name up for auction, requesting $3,000. The Panel notes that Respondent agrees the domain names were put up for sale. The Panel finds that there is no bona fide offering under Policy ¶ 4(c)(ii) in registering confusingly similar domain names merely to attempt to secure the sale of those domain names to the entity that controls the mark to which the domain name is confusingly similar. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“UDRP precedent is clear that auctioning domains does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of domains.”).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
The Complainant has proven this element.
Because the Complainant has established all three elements required under the usTLD Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <valeroenergylng.us> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: January 13, 2015
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