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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Valero Energy Corporation, Valero Refining and Marketing Company v. Linkz Internet Services

Case No. D2008-0479

1. The Parties

The Complainant is Valero Energy Corporation and Valero Refining and Marketing of San Antonio, Texas, United States of America, represented by Stumpf Farrimond PC, United States of America.

The Respondent is Linkz Internet Services of Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, represented by John Berryhill Ph.D., Esq., United States of America.

2. The Domain Name and Registrar

The disputed domain name <valerojobs.com> is registered with Domain Name Sales Corp.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 27, 2008. On March 31, 2008, the Center transmitted by email to Domain Name Sales Corp. a request for registrar verification in connection with the domain name at issue. On March 31, 2008, Domain Name Sales Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Complainant filed an amendment to the Complaint on April 11, 2008. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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”).

On April 1, 2008, the Respondent’s representative wrote to the Complainant’s representative stating that the Respondent had no objection to the immediate transfer of the disputed domain name to the Complainant. The correspondence enclosed a written notice for the proceeding to be temporarily suspended, so the registrar could proceed with an immediate transfer of the domain name and also a request to withdraw the proceeding once this had been done. Both documents had been signed by the Respondent’s representative. A copy of this correspondence was also provided to the Center. However, a settlement was not reached between the parties on this basis.

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 April 14, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 4, 2008. The Response was filed with the Center on May 4, 2008.

The Center appointed John Swinson as the sole panelist in this matter on May 13, 2008. 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, and its wholly owned subsidiary Valero Refining and Marketing Company (both companies will be referred to together as the Complainant). Valero was established in 1980, and has its headquarters in San Antonio, Texas. The Complainant owns and operates oil and gas refineries, and operates gasoline retail stores, in the United States of America (United States), Canada and the Caribbean. The Complainant is currently listed as a Fortune 500 company.

The Complainant has registered several VALERO trade marks in the United States (see for example United States registration numbers 3108715, 2560091, 2656971 and 1314004).

The Complainant has a website located at “www.valero.com”.

The website located at the disputed domain name is not operational.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

A previous panel held that the Complainant has rights to the VALERO and VALERO ENERGY CORPORATION marks.

The Complainant owns numerous federal trade mark registrations in the United States over VALERO, and the earliest registration was issued in 1985. There is a substantial amount of favourable consumer recognition and goodwill associated with the VALERO trade mark, as they have been used for at least 24 years. The Complainant also owns the <valero.com> domain name.

The disputed domain name is confusingly similar to the marks owned by the Complainant, because it contains the mark VALERO followed be a descriptive word, which would inform visitors where they could find information about careers with the Complainant. The addition of a generic word to a recognized mark creates confusing similarity.

The Respondent has no rights or legitimate interests in the disputed domain name, because it has never commonly been known by that name, has not used or made demonstrable preparations to use the domain, and is not making a legitimate noncommercial or fair use of the domain, without intent for commercial gain.

The Respondent has used the disputed domain name to operate a domain parking website for profit, which is intended to trade on the fame of the Complainant’s mark. Such conduct is not a bona fide offering of goods or services, or a legitimate noncommercial or fair use, because it is trading off the Complainant’s mark.

The Complainant has not licensed or authorized the Respondent to use any of its trade marks, including the VALERO mark.

The disputed domain name was registered by the Respondent on June 16, 2005. At this time, the Complainant was the 22nd largest company in the United States, so it is reasonable to assume that the Respondent was aware of the famousness of the VALERO mark, and this knowledge is what led the Respondent to register the domain.

The fact that the domain resolves to a domain parking site that the Respondent operates for commercial profit, is strong evidence of the Respondent’s bad faith.

B. Respondent

The Respondent makes the following contentions:

The Complainant refused to accept the transfer of the disputed domain name. The Respondent urges that the Panel order a transfer of the disputed domain name to the Complainant.

The Respondent has collected over one hundred domain names which contain the word “jobs” at the end, for example, <airlinecateringjobs.com>, <gardnerjobs.com>, <tennesseejobs.net> and <federalgovernmentjobs.net>. The majority of these names, and the disputed domain name, were registered from among expired and abandoned domain names.

The disputed domain name was registered by the Respondent based on the meaning of Valero as a geographic location in Spain, from which the Complainant’s trade mark is derived. The geographic significance of the term Valero is noted by the Complainant in its trade mark registrations (San Antonio, where the Complainant is based is well known for the Alamo, which was originally called the San Antonio de Valero).

Prior to receiving communication from the Complainant, the Respondent had never heard of the Complainant.

The automated advertising system used in connection with the disputed domain name automatically associated the disputed domain name with links relevant to the petroleum industry in which the Complainant operates (rather than in relation to its geographic meaning). Accordingly the Respondent has no objection to transferring the disputed domain name to the Complainant.

The Respondent provided standard forms to transfer the disputed domain name to the Complainant, prior to the commencement of proceedings, but the Complainant sought payment of USD 2,000 and refused to sign these documents and refused to return any phone calls or correspondence from the Respondent’s representative.

In a previous case involving the Complainant, it was noted that the respondent in that case had consented to the requested relief, but the Complainant persisted with the claim. The Complainant has caused itself further delay by continuing with the proceeding, because the registrar will have to wait an additional 10 days after the order is made to implement a transfer of the disputed domain name.

While the Respondent registered the disputed domain name for purposes consistent with registration of numerous “jobs” domain names, and was unaware of the Complainant at that time, the Respondent agrees that the domain name should be transferred, but no other findings should be made.

6. Discussion and Findings

The Respondent has asked the Panel to transfer the disputed domain name to the Complainant (which is the same relief that the Complainant seeks). These circumstances are similar to the previous cases of The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132; Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207, and a previous decision involving the Complainant: Valero Energy Corporation, Valero Refining and Marketing Company v. RareNames, WebReg, WIPO Case No. D2006-1336.

The Panel agrees with the following comments from The Cartoon Network case:

“[T]his Panel considers that a genuine unilateral consent to transfer by the Respondent provides a basis for an immediate order for transfer without consideration of the paragraph 4(a) elements. Where the Complainant has sought transfer of a disputed domain name, and the Respondent consents to transfer, then pursuant to paragraph 10 of the Rules the Panel can proceed immediately to make an order for transfer.”

Also relevant is the following comment from Williams-Sonoma:

“Because Respondent has consented to the relief requested by Complainant, it is not necessary to review the facts supporting the claim. […] Here, although Respondent has consented to the requested relief, the parties have not agreed to a formal settlement and terminating the proceeding would not effect the parties intent. Under Rules 10 and 12, the Panel appears to have authority to delay the decision and permit the parties time to submit confirmation that they have agreed to a settlement. That procedure, however, would delay this proceeding and impose unnecessary cost on both the parties and the Center. Under the circumstances, I believe the better course is to enter an order granting the relief requested by the Complainant so that the transfer may occur without further delay.”

The Panel notes that the Respondent’s representative made what appears to be genuine efforts to settle this matter directly with the Complainant prior to commencement of these proceedings.

The Complainant did not agree to settle and chose to continue with these proceedings. This decision was of course open to the Complainant. However the Panel must agree with the Respondent’s comments that in doing so, the Complainant has only caused itself further delay in having the disputed domain name transferred to it.

The Panel accordingly decides that the disputed domain name should be transferred to the Complainant without determination of the elements of paragraph 4(a).

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <valerojobs.com> be transferred to the Complainant.

John Swinson
Sole Panelist

Dated: May 27, 2008