Valero Energy Corporation and Valero Marketing and Supply Company v. Valero Syedi
Claim Number: FA1611001701231
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 Valero Syedi (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <valero.us>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 3, 2016; the Forum received payment on November 3, 2016.
On November 3, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <valero.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 November 4, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 25, 2016 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@valero.us. Also on November 4, 2016, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On December 5, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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 for usTLD Dispute Resolution Policy ("Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant uses the VALERO mark to identify with its business in the oil and gas industry, and holds several governmental registrations for the VALERO mark. Specifically, Complainant holds Registry No. 4,216,650 with the United States Patent and Trademark Office (“USPTO”) (registered Oct. 2, 2012). Compl., at Attached Annex 4. Next, Respondent’s <valero.us> is confusingly similar to the VALERO mark, save for the addition of the country-code top-level domain (“ccTLD”) “.us.”
2. Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by <valero.us> because the WHOIS does not reflect as much, and Complainant has not given any authorization to Respondent to use its marks. To this end, a screenshot of the results from searches conducted on September 20, 2016 are attached as Annex 1, showing registrant’s name as “Farooq Syedi.” After receiving a demand letter from Complainant, the registrant changed the Whois records to identify himself as “Valero Syedi.” See Compl., at Attached Annex 2. Additionally, there has been no bona fide offering of goods or services or any legitimate noncommercial or fair use. Instead, Respondent has used <valero.us> to solicit offers to purchase the domain name. See Compl., at Attached Annex 5 (“Welcome to Valero.us. Interested in this Domain?”). After receipt of the demand letter, Respondent took down the solicitation and now the domain name resolves to a dead site. See Compl., at Attached Annex 6.
3. Respondent registered or used <valero.us> in bad faith. Respondent registered or used <valero.us> with actual and/or constructive knowledge due to Complainant’s status as the 13th largest company in the United States (see Compl., at Attached Annex 8), as the fame associated with the VALERO mark. Further, Respondent’s use of false WHOIS information shows its attempt to hide its identity in a vain attempt to present itself as legitimate, sending an email to Complainant stating that one of its children is named “Valero Syedi.” This constitutes an attempt to defraud and therefore evidence of bad faith under Policy ¶ 4(a)(iii).
B. Respondent
1. Respondent did not submit a Response.
1. Respondent’s <valero.us> domain name is confusingly similar to Complainant’s VALERO mark.
2. Respondent does not have any rights or legitimate interests in the <valero.us> domain name.
3. Respondent registered or used the <valero.us> domain name in bad faith.
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 and 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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant uses the VALERO mark to identify with its business in the oil and gas industry, and holds several governmental registrations for the VALERO mark. Complainant alleges that it holds Registry No. 4,216,650 with the USPTO (registered Oct. 2, 2012). Compl., at Attached Annex 4. It is such registrations which Complainant argues is satisfactory in a determination of Policy ¶ 4(a)(i) rights. Panels have frequently seen complainants’ rights satisfied through valid USPTO registrations of their marks. See Intel Corp. v. Macare, FA 660685 (Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO). Therefore, the Panel agrees that Complainant has established rights in the VALERO mark per Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <valero.us> is confusingly similar to the VALERO mark, save for the addition of the ccTLD “.us.” Panels have seen the addition of a ccTLD to a fully incorporated mark as unsuccessful in overpowering a finding of confusing similarity per Policy ¶ 4(a)(i). See Allied Bldg. Prods. Corp. v. Henkel, FA 827652 (Forum Dec. 11, 2006) (holding that “it is well established that the top-level domain, here ‘.us,’ is insignificant with regard to UDRP analysis” when determining confusing similarity). The Panel therefore agrees that Respondent’s <valero.us> is confusingly similar to the VALERO mark per Policy ¶ 4(a)(i).
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), and 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 (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); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain
names.”).
Complainant posits that Respondent has no rights or legitimate interests in the disputed domain name. To begin, Complainant asserts that Respondent is not commonly known by the disputed domain name nor has Respondent been authorized by Complainant to register any variant of VALERO in a domain name per Policy ¶ 4(c)(iii). To this end, a screenshot of the results from searches conducted on September 20, 2016 are attached as Annex 1, showing registrant’s name as “Farooq Syedi.” After receiving a demand letter from Complainant, the registrant purportedly changed the WHOIS records to identify himself as “Valero Syedi.” See Compl., at Attached Annex 2. Whether or not WHOIS information mirrors a domain name requires a respondent to provide some assertion to the record to rebut a complainant’s prima facie arguments. See Google Inc. v. S S / Google International, FA1506001625742 (Forum Aug. 4, 2015) (“Respondent did identify itself as ‘Google International’ in connection with its registration of the Disputed Domain Name, and this is reflected in the WHOIS information. However, Respondent has not provided affirmative evidence from which the Panel can conclude that Respondent was commonly known by the Disputed Domain Name before Respondent’s registration thereof.”). Accordingly, the Panel agrees that Respondent has failed under Policy ¶ 4(c)(iii).
The Panel further agrees that there is nothing in the available evidence which indicates that Respondent has rights in a mark identical to the disputed domain name, which would serve to satisfy Policy ¶ 4(c)(i). See Pepsico, Inc. v. Becky, FA 117014 (Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)). Therefore, this Panel concludes that Respondent has failed Policy ¶ 4(c)(i).
Additionally, Complainant argues that there has been no bona fide offering of goods or services or any legitimate noncommercial or fair use. Instead, Respondent has used <valero.us> to solicit offers to purchase the domain name. See Compl., at Attached Annex 5 (“Welcome to Valero.us. Interested in this Domain?”). General offers to sell a domain name have been considered unsatisfactory in reaching a prima facie burden under Policy ¶¶ 4(c)(ii) and (iv). Cf. Twentieth Century Fox Film Corporation v. Diego Ossa, FA1501001602016 (Forum Feb. 26, 2015) (“The Resolving parked page advertises the sale of the domain name with the message ‘Would you like to buy this domain?’ The Panel accepts this offer as demonstrative of Respondent’s willingness to sell the disputed domain name, and finds that such behavior provides additional evidence that Respondent lacks rights or legitimate interests in the disputed domain name.”); Vance Int’l, Inc. v. Abend, FA 970871 (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.”). Therefore, the Panel agrees that the general solicitation included on Respondent’s website shows a lack of bona fide offering of goods or services or any legitimate noncommercial or fair use per Policy ¶¶ 4(c)(ii) and (iv).
Complainant notes—after receipt of the demand letter—Respondent took down the solicitation and now the domain name resolves to a dead site. See Compl., at Attached Annex 6. Failure to make an active use of a domain name has been a precursor to a finding of no rights and legitimate interests in UDRP proceedings. See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Forum Apr. 9, 2007) (“Respondent’s failure to associate content with its disputed domain name evinces a lack of rights and legitimate interests pursuant to Policy ¶ 4(a)(ii).”). Therefore, while Respondent took down the offer for sale after the demand letter was sent, the Panel agrees that the lack of content now associated with <valero.us> provides further evidence of a lack of rights and legitimate interests.
The examples of bad faith registration or use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which bad faith may be found. See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000). The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. See, e.g., Match.com, LP v. BillZag and NWLAWS.ORG, D2004-0230 (WIPO June 2, 2004). While Complainant has not made any arguments that would fit within the bounds of Policy ¶ 4(b) elements, the Panel therefore considers Respondent’s actions under a nonexclusive inquiry of Policy ¶ 4(a)(iii).
Complainant asserts that Respondent registered or used <valero.us> in bad faith. Specifically, Complainant contends that in light of the fame and notoriety of Complainant's VALERO mark, it is inconceivable that Respondent could have registered <valero.us> without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel here finds that any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and find that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Further, Complainant argues that Respondent’s use of false WHOIS information shows its attempt to hide its identity in a vain attempt to present itself as legitimate. Arrangement of WHOIS information in a dishonest manner has been found to constitute bad faith. See Dell Inc. v. Catherine Barger, FA1502001605282 (Forum Mar. 23, 2015) (holding that because the respondent appeared to have taken the name “Catherine Barger” from a New Jersey obituary and then used this as a false name, the respondent had registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii)). Respondent purportedly sent an email to Complainant stating that one of its children is named “Valero Syedi.” Attached Annex 7. In addition, prior to receiving the demand letter from Complainant on October 26, 2016, the WHOIS identified “Farooq Syedi.” Attached Annex 1. After receiving the demand letter, Respondent changed the WHOIS to “Valero Syedi” in an attempt to provide merit to his child-naming story (see Compl., at Attached Annex 7). Therefore, the Panel agrees that
Respondent’s unusual behavior surrounding the changing of WHOIS information demonstrates an intent to mislead the Panel or obscure the facts of the proceeding and therefore constitutes evidence of bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <valero.us> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: December 16, 2016
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