Westmore · UDRP DecisionValerofcu.org
The Panel ordered transfer of <valerofcu.org>. It found the domain confusingly similar to the Complainant’s VALERO trademark because it incorporated the mark in full and merely added “fcu,” a common abbreviation for “federal credit union.” The Respondent did not rebut the Complainant’s prima facie showing regarding rights or legitimate interests. Bad faith was found because the domain was offered for sale at auction with a minimum bid of USD 788; the Panel also noted the Respondent’s involvement in 10 previous WIPO UDRP proceedings resulting in transfer orders.
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The decision illustrates a straightforward trademark-plus-abbreviation dispute in which a direct domain-sale solicitation supported bad faith. The case also shows how a respondent’s failure to answer can leave an unrebutted prima facie case sufficient for the rights-or-legitimate-interests element.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Valero Energy Corporation and Valero Marketing and Supply Company v. Perfect Privacy LLC / Milen Radumilo Case No. D2016-2173 1. The Parties The Complainant is Valero Energy Corporation and Valero Marketing and Supply Company from San Antonio, Texas, United States of America (“United States”) represented by Fasthoff Law Firm PLLC, United States. The Respondent is Perfect Privacy LLC of Jacksonville, Florida, United States / Milen Radumilo of Bucharest, Romania. 2. The Domain Name and Registrar The disputed domain name <valerofcu.org> is registered with Adomainofyourown.com LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 27, 2016. On October 27, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 1, 2016, 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 the Complainant on November 2, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on the same day. 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 the Respondent of the Complaint, and the proceedings commenced on November 3, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 23, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 24, 2016. The Center appointed David Stone as the sole panelist in this matter on December 1, 2016. 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 Valero Marketing and Supply Company is a wholly-owned subsidiary of the Valero Energy Corporation, which is based in San Antonio, Texas, United States. The Complainant is an international manufacturer and marketer of transportation fuels, other petrochemical products and power, and has used the VALERO mark in commerce for over 31 years. The Complainant has also registered a number of trademarks, including with the United States Patent and Trademark Office (“USPTO”). In this context, the Complainant owns inter alia USPTO trademark registration number 1314004 for VALERO, registered on January 8, 1985. The Respondent registered the disputed domain name, <valerofcu.org> on January 30, 2016. At the time the Complaint was filed, the disputed domain name resolved to a single-page website with the sales solicitation “Buy this Domain”. Clicking upon the sales solicitation took the visitor to the “www.sedo.com” website where the disputed domain name was, at the time of filing of the Complaint, offered for sale at auction with a minimum bid of USD 788. 5. Parties’ Contentions A. Complainant The Complainant asserts that it has rights in the VALERO trademarks. It contends that the disputed domain name is confusingly similar to the Complainant’s marks because it consists of the Complainant’s VALERO mark in its entirety, and that the only difference between the Complainant’s mark and the disputed domain name is the addition of the letters “fcu”, a common abbreviation for the generic term “federal credit union”, and the generic Top-Level Domain (“gTLD”) “.org”. The Complainant further alleges that the Respondent has no rights or legitimate interests in the disputed domain name, and that the Respondent registered and uses the disputed domain name in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy sets out the three requirements that the complainant must prove in order to succeed: (i) that the respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant provided evidence that it has registered and used VALERO as a trademark in the United States. The Panel finds that VALERO is a trademark in which the Complainant has rights. Other than the addition of the letters “fcu” at the end of the relevant part of the disputed domain name, the disputed domain name is identical to the Complainant’s VALERO trademarks. The addition of the letters “fcu”, a common abbreviation for the generic term “federal credit union,” is insufficient to vitiate the confusing similarity. The disputed domain name wholly incorporates the Complainant’s registered VALERO trademarks, and previous UDRP panels have held that adding common terms to a registered trademark and registering the result as a domain name does not mitigate the confusing similarity between the domain name and the mark: see Hoffmann-La Roche Inc. v. Wei-Chun Hsia , WIPO Case No.D2008-0923; Deutsche Telekom AG v. Gems N Pearls International Holding , WIPO Case No. D2005-0820 . The Panel further notes that the gTLD “.org” may be disregarded for the purposes of comparison under this element of the Policy ( Arthur Guiness Son & Co. (Dublin) Limited v. Dejan Macesic , WIPO Case No. D2000-1698 ). The Panel finds that the Complainant has satisfied the condition set out in the Policy, paragraph 4(a)(i) and that the Domain Name is identical or confusingly similar to the Complainant’s trademarks. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy sets out the non-exhaustive criteria which determine whether a domain name registrant has rights or legitimate interests in a domain name, namely if it has a: (i) prior bona fide offering of goods or services; or (ii) common association with the domain name; or (iii) legitimate noncommercial use. The Complainant has made a prima facie case that none of the circumstances under paragraph 4(c) applies. The Respondent did not exercise its right to respond substantively in these proceedings. Thus, the Respondent has failed to rebut the prima facie case made by the Complainant or advance any other argument supporting rights or legitimate interests. Consequently, the Panel finds that the Complainant has established the second element under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) sets out the non-exhaustive criteria for bad faith. Bad faith constitutes the intention to register and use a domain name in order to: (i) sell, rent or transfer the domain name to the trademark owner (or a competitor thereof) for a profit; (ii) prevent the trademark owner from registering its trademark in a domain name; (iii) disrupt the business of a competitor; or (iv) divert Internet traffic for commercial gain. The Complainant contends that the Respondent has offered to sell the disputed domain name at auction for the minimum sum of USD 788, which the Panel finds in bad faith within the meaning of paragraph 4(b)(i) of the Policy. The Panel notes for completeness that the Respondent has been subject to 10 previous UDRP proceedings before the Center, and was in each case ordered to transfer the domain name(s). Previous panels have found that the conduct of a respondent in registering multiple third party trademarks as domain names is in itself evidence of bad faith: Dr. Ing. h. c. F. Porsche AG v Limex, LLC , WIPO Case No. D2003-0649 . The Panel therefore finds that the criterion in paragraph 4(b)(i) of the Policy is made out, and that there is sufficient evidence to find that the Respondent registered and is using the disputed domain name in bad faith. 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 <valerofcu.org> be transferred to the Complainant. David Stone Sole Panelist Date: December 9, 2016
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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