Valero Energy Corporation v. American Distribution Systems, Inc.

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Valero Energy Corporation v. American Distribution Systems,

Inc., D/B/A Default Data.Com And Brian Wick

Case No. D2001-0581

1. The Parties

Complainant is Valero Energy Corporation., a Delaware corporation with its

principal place of business in San Antonio, Texas, U.S.A. (Valero).

Respondents are (a) American Distribution Systems, Inc., d/b/a DefaultData.com,

and (b) Brian Wick. American Distribution Systems, Inc., is a corporation

with a physical address in Aurora, Colorado, U.S.A., and a mailing address in

Denver, Colorado, U.S.A. Brian Wick is an individual whose addresses are the

same as American Distribution Systems, Inc.’s addresses. Brian Wick is president

of American Distribution Systems, Inc. In this decision, Respondents are some

times referred to collectively as Respondents and sometimes by their individual

names (i.e. American Distribution and Wick).

2. Domain Name and Registrar

The domain name in issue is <valeroenergy.com>.

The registrar is Register.com, Inc. with offices in New York, New York, U.S.A.

(Register).

3. Procedural History

The WIPO Arbitration and Mediation Center (the Center) received Valero’s complaint

in hard copy form on April 23, 2001, and via email on April 25, 2001. After

the complaint was received in electronic form, the Center verified that the

complaint satisfies the formal requirements of the ICANN Uniform Domain Name

Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute

Resolution Policy (the Rules), and the Supplemental Rules for Uniform Domain

Name Dispute Resolution Policy (the Supplemental Rules). Valero made the required

payment to the Center. The formal date of the commencement of this administrative

proceeding is May 2, 2001.

On April 26, 2001, the Center transmitted via email to Register a request for

registrar verification in connection with this case. On April 30, 2001, Register

transmitted via email to the Center Register’s confirmation that (1) Wick is

the current registrant of the domain name in issue, (2) the Policy applies to

the domain name, and (3) the domain name is "active".

On May 2, 2001, the Center transmitted to Respondents Notification of Complaint

and Commencement of the Administrative Proceeding, together with a copy of the

Complaint, via post/courier, facsimile, and email. The Center advised, inter

alia, that the response was due by May 21, 2001, and pointed out the response

should be in accordance with requirements set out in the Rules and the Supplemental

Rules.

On May 17, 2001, the Center received Respondents’ request for an extension

to May 26, 2001, of their time to file. On May 17, 2001, Valero transmitted

to the Center Valero’s objection to Respondents’ request. On May 18, 2001, the

Center advised the parties via email that the Center had set a new due date

of May 24, 2001.

The Center received Respondents’ response via email on May 24, 2001, and in

hard copy on May 29, 2001. Respondents requested a panel of three arbitrators.

On May 25, 2001, the Center requested via email that by May 30, 2001, each party

identify three candidates for the panel.

On May 24, 2001, Valero requested via email permission to file a reply to the

response. On May 25, 2001, the Center advised Valero via email that it would

be in the panel’s sole discretion if Valero were to submit a reply.

On May 25, 2001, Valero advised the Center and Respondents of Valero’s three

candidates for the panel. On the same day, Respondents objected to each of Valero’

s candidates. On May 30, 2001, Valero advised the Center and Respondents via

email that Respondents’ objections should be disregarded. On June 1, 2001, the

Center responded via email to Respondents’ May 25 objections. On June 5, 2001,

Wick transmitted to the Center another email, stating in part:

"I operate over one hundred parody web sites using Internet domains that ‘correspond’

to large, powerful and successful law firms and kindly request a panel of retired

or current Judges (solely at the choice of the WIPO) and not ‘lawyers’ who become

‘arbitrators for the day’ ... ."

On July 4, 2001, the Center acknowledged receipt of the foregoing message and

advised that it would be forwarded to the panel.

On July 5, 2001, the Center received via email Valero’s reply to the response,

and on July 12, 2001, a hard copy of the reply. On July 6, 2001, the Center

advised Valero that the reply would be forwarded to the panel and consideration

of the reply is discretionary with the panel.

On July 9, 2001, the Center received via email Respondents’ "Response To Complainant’s

Addendum", and on July 16, 2001, a hard copy version of the document. On July 10, 2001,

the Center acknowledged receipt of this response, and advised it would be forwarded

to the panel and consideration is discretionary with the panel.

On July 23, 2001, the Center advised the parties via email of the appointment

of Gordon D. Harris and Richard W. Page as panelists, and David W. Plant

as presiding panelist, and that in accordance with Rules, Paragraph 15, the

decision is to be transmitted to the Center by August 6, 2001.

4. Factual Background; Parties’ Contentions

a. The Trademark

The complaint is based on the service marks VALERO and VALERO ENERGY CORPORATION.

Both are registered on the principal register of the United States Patent and

Trademark Office (USPTO). Copies of the registrations appear at Annexes 3 and

4 to the complaint. VALERO is a word mark, first used in commerce in 1983. VALERO

ENERGY CORPORATION is a word and design mark, first used in commerce in 1979.

The registrations issued in 1985 and 1982, respectively.

b. The Complaint Re Respondents’ Activities

Valero contends that (1) the domain name in issue is identical or confusingly

similar to the service marks in which Valero has rights, (2) Respondents have

no rights or legitimate interests in the domain name, and (3) the domain name

was registered and is being used in bad faith.

Valero contends that the domain name is confusingly similar to its registered

service marks because <valeroenergy.com> contains the word mark VALERO

and two of the words in the VALERO ENERGY CORPORATION mark.

Valero cites authority to the effect that Internet users often hazard a guess

as to a domain name, especially if there is an obvious domain name to try. Valero

asserted its counsel discovered Respondents’ domain name by hazarding such a

guess that "www.valeroenergy.com" would address Valero’s website.

Valero contends that Respondents have no rights to the domain name because

Valero owns the exclusive right to use the service marks throughout the United

States in connection with oil and gas exploration, production, processing and

distribution services. Valero asserts that because <valeroenergy.com>

is confusingly similar to Valero’s service marks, Respondents "cannot prove

any legal right to the domain name," citing Morrison & Foerster, L.L.P.

v. Wick, 94 F.Supp.2d 1125, 1134-35 (D.Colo. 2000).

Valero contends Respondents have no legitimate interests in the domain name,

because "Respondents have a long, documented history of engaging in cybersquatting

activity," and "Respondents have repeatedly [been] found to have violated the

intellectual property rights of trademark owners by registering and using certain

domain names in bad faith," citing Morrison & Foerster, supra, Hunton

& Williams v. American Distribution Systems, Inc. et al., WIPO

D2000-0501, and Bandon Dunes, L.P. v. DefaultData.com, WIPO

D2000-0431.

Valero contends Respondents have registered and are using the domain name in

bad faith, asserting:

1. Wick boasts on his personal website he has registered "several hundred Internet

Domains confusingly similar [sic] to large law firms & the large

companies ...." (Emphasis in complaint. Copy of April 5, 2001 website appears

at Annex 7.) Wick has also testified under oath he has registered domain names

for 7% of the Fortune 500 companies as his "way of messing with them." Valero

is a Fortune 500 company. It is reasonable to conclude Wick was aware Valero

"had an interest in the domain name," before he registered it.

2. In Morrison & Foerster, the court found Wick’s registration of

several domain names was in bad faith, "based primarily on Wick’s testimony

in which he admitted that he was on a ‘rampage’ against corporate America and

the legal community and took pleasure in seeing others ‘squirm around over 70

bucks.’" This testimony and his "messing with them" testimony "conclusively

demonstrate the Respondents’ bad faith."

3. After receiving Valero’s February 14, 2001 "demand letter" [1],

Respondents’ "first response was to publish a website using the <valeroenergy.com>

domain name," with, in photos and text, "presumably a reference to cattle manure."

(Copy of website printout at Annex 8.) Respondents’ use of Valero’s marks in

the domain name is "in connection with energy sources, a use of the ... marks

to which Complainant owns the sole rights pursuant to its U.S. trademark registrations."

4. The "Infringing Website also contains hyperlinks to numerous other websites

owned and operated by Respondents ... These websites contain simulated images

depicting various celebrities and politicians and others being portrayed in

a disparaging light. The Respondents’ use of a domain name that is confusingly

similar to Complainant’s service marks is disparaging to Complainant. Any argument

from Respondents that the Infringing Website is merely a parody or fair use

fails as a matter of law." Valero cites the Bandon Dunes decision, supra.

5. It is "self-evident that Respondents seek to divert traffic from Complainant’s

website to the Infringing Website." Valero cites Hunton & Williams,

supra.

6. There is no evidence "either Respondent has ever used, or prepared to use,

the domain name ... in connection with a bona fide offering of goods or services."

7. Neither Respondent has ever been commonly known by the name "Valero Energy".

8. Wick’s testimony clearly shows he registered <valeroenergy.com> "for

the purpose of preventing Complainant from doing so."

9. Respondents have made no fair use of the domain name. Respondents’ fair

use defenses have been uniformly rejected, citing, e.g. Bandon Dunes,

supra. Nothing on the "Infringing Website ... could reasonably be considered

a ‘parodic character.’ Respondents fail to meet the threshold requirement for

a parody."

Valero requests that the panel determine that <valeroenergy.com> be transferred

to Valero.

The complaint concludes with the requisite certification as to completeness

and accuracy and is signed by Valero’s counsel.

c. The Response

1. Preliminary Comments

The response, not including Exhibits, comprises more than 11,000 words, thus

exceeding by more than 6,000 words the 5,000 word limit set out in Supplemental

Rules, Paragraph 10.(b). The response includes abundant and redundant argument

asserting various rights under the U.S. Constitution, criticizing "the Establishment",

challenging the integrity of the process under the Policy and Rules, challenging

the impartiality of panelists, challenging the competence of the judiciary,

and the like.

The panel has elected to consider the response to the extent its contentions

and assertions are arguably relevant here. We summarize here the portions of

the response which appear pertinent to aspects of the dispute over which the

panel has jurisdiction in this proceeding. In so doing, for each contention

and assertion, we have cited at least one page at which the contention or assertion

appears in the response. Also, to some extent, we have attempted to group contentions

and assertions directed to similar points.

The response is generally written in the first person. It is signed on behalf

of all Respondents by Wick.

2. Respondents’ Contentions and Assertions

In essence, Wick asserts throughout that U.S. Constitutional guarantees of

free speech (Wick refers to the 5th and 14th Amendments) give rise to a right

in Wick to use Valero’s service marks, as well other well-known marks, as Internet

addresses to websites at which Wick contends he parodies an aspect of the trademark

or service mark owner’s activities. In addition, Wick asserts (p. 3) that ACPA

§3002(d)(1)(B)(ii), in providing that bad faith intent shall not be found where

a court determines "the person believed and had reasonable grounds to believe"

that use of the domain name was a fair use, affords Wick permission to use any

Internet domain name that corresponds or is identical to a "famous, strong and

exclusive" mark. At the same time, Wick asserts (p. 8) ACPA & ICANN UDRP

violate the U.S. Constitution.

Wick contends (p. 4) in August 1999 NameIsForSale.com became American Distribution’s

d/b/a for all his Internet based activities, including:

"a) Operating free bulletin board like eBay matching buyers & sellers.

"b) Offering my programming services and selling my generic Internet Domains.

"c) ‘TownDrunk Parody Web Site Network’ which can be accessed by keying in

TownDrunk.com or by keying in one of my generic Internet Domains ...

"(1) The TownDrunk Parody Web Site Network links to my Trademark Internet Domain

parody pages but these pages do not link back or anywhere else:

"(a) Non commercial, NO meta-tags, NO meta-links, NO hyper-links, NO email,

NO advertising and NO goods or services offered [2].

"(b) Just free information about the Establishment in the form of parody."

Wick asserts (p.5) that "I changed my ‘default’ company at Register.com to

my d/b/a NameIsForSale.com for all new Internet Domain reservations," and --

"a) From August 1999 on, all my Trademark & generic Internet Domains were

reserved with my Internet d/b/a/ NameIsForSale.com as the WHOIS contact company

[3]

"b) 85% percent [sic]of my Internet Domains are generic ... and 15% of my Internet

Domains ‘correspond (are identical)’ to famous, strong and exclusive marks like

ValeroEnergy.com." [4]

Wick contends (p. 5) that ACPC and UDRP opinions have "subjectively translated

my d/b/a NameIsForSale.com to: ‘This Internet Domain is for sale only to the

mark holder for a lot of money.’" Wick asserts (p. 5) that as a consequence

he changed his WHOIS contact company to a d/b/a DefaultData.com. "This long

and lengthy process (10 screens per domain) was finally done by June 2000."

Wick asserts (p. 6) this change led to UDRP opinions that he was attempting

to hide is true intentions.

Wick asserts also (p. 7):

"a. By the Complainant’s own admission, ValeroEnergy.com is confusingly similar

to the Complainant’s Mark ‘Valero Energy’ which is famous, strong and exclusive.

"1) We both operate using an identical channel of trade ... .[also, p. 22]

* * *

" .... one might hazard a guess at keying in an Internet Domain, like ValeroEnergy.com,

as emphasized in the aforementioned Brookfield and Sporty’s cases

and be surprised with free speech information about the energy industry in the

form of parody."

Wick contends (p. 21):

"Because ValeroEnergy.com is confusingly similar to the mark ‘Valero Energy

Corporation’, any free speech author, including me, is able to use ValeroEnergy.com

to communicate free information about the energy industry."

Wick asserts (p. 21) that both Valero’s web site, at Valero.com, and his web

site, at ValeroEnergy.com, "communicate free information about the energy industry."

Wick contends (p. 13):

"f. When I communicate free speech information about the energy industry using

ValeroEnergy.com, I am really communicating free speech information using the

famous, strong and exclusive mark ‘Valero Energy’, which is used in every other

media channel.

"g. Examples of fair use free speech using ValeroEnergy.com:

* * *

"2) I communicate free information about energy industry in the form of a fan

club using ValeroEnergy.com to praise Valero Energy Corporation.

* * *

"4) I communicate free information about the energy industry in the form of

parody using ValeroEnergy.com." (Also, p. 21)

Wick contends (p. 22) his U.S. Constitutional rights afford him opportunities

to learn from his mistakes, but "my subjectively interpreted mistakes

are turning out to be a result of flawed ACPA & UDRP opinions anyway." (Emphasis

in response)

Wick asserts (p. 24) he includes "a standard disclaimer at the top of each

page, which is a parody in itself ... ."

Wick contends (pp. 23, 24) the majority of his Trademark Internet Domains were

"reserved" prior to the ACPA & UDRP, i.e. were "operational" by the end

of 1999.

Wick asserts (p. 5), "I have never listed any of my Trademark Internet Domains

for sale."

Wick asserts (p. 5) that, in response to "unsolicited threatening communication

from lawyers," [5] he

"reacted by modifying my parody web site content & WHOIS contact information

and because of some of the letters, I even registered a few of my parodies as

bogus d/b/a’s of my company ADSI which I withdrew a few months later when I

realized I had been manipulated by these unsolicited phone calls and letter

from lawyers. (Exhibit-J)" [6]

Wick asserts (p .6) "an imaginary d/b/a WHOIS company called FreeSpeechParody.com

could operate the exact same parody [as Wick] is the only evidence of bad-faith

that has ever existed." Wick contends (p. 6) "many people (including lawyers)

have created temporary email addresses and sent me email trying to entrap me.

(Exhibit K)." [7]

Wick avers (p. 6) ADPC and UDRP opinions "also cited my high volume of Trademark

Internet Domains." Wick states (p.6) "I have never made a secret of how excited

I was to be able to communicate free information about the Establishment in

the form of parody using the Establishment’s capriciously coveted Internet Domains."

Wick contends (p. 7) "I have always better communicated with people (or messed

with as I have testified) in a more sarcastic way using parody, metaphors and

similes."

Wick asserts (p. 9) that Valero "reserved ValeroEnergy.net on October 12, 2000

... ValeroEnergy.net is surely a ‘corresponding domain name’ for the famous,

strong and exclusive mark ‘Valero Energy’."

Wick contends (p. 9, also 18) he cannot sell "my Trademark Internet Domains

because they are the integral part of my ‘TownDrunk Parody Web Site Network’.

I do not make a direct commercial use of my Trademark Internet Domain parodies

simply because these web sites have NO meta-tags, NO meta-links, NO hyper-links,

NO email, NO advertising and NO goods or services offered." Wick contends (p.

16) he makes "no commercial use of ValeroEnergy.com, or any of my Trademark

Internet Domain parodies ... ."

Wick contends (p. 10):

"a. Valero Energy has produced no bad-faith evidence of their own, because

they know there is no bad-faith evidence to be found.

"b. Valero Energy is relying solely on the US unconstitutional guilty-until-proven-innocent

legal model by riding the coat tails of retroactive, unknown and subjectively

interpreted evidence from previous ACPA & UDRP cases."

Wick contends (p. 11) Valero is guilty of bad faith, asserting that Valero

had 3.5 years from the time Valero registered Valero.com in February 1996 to

Wick’s registration of ValeroEnergy.com in October 1999, and by Valero’s admission,

it "did not even capriciously covet ValeroEnergy.com until March 2001, over

5 years after reserving Valero.com." Wick asserts Valero has been derelict and

negligent "in tending to a capriciously coveted Internet Domain they new [sic]

how to reserve and could have reserved for 3.5 years."

Wick contends (p.12) Valero claims "Rights-In-Gross for their mark ‘Valero

Energy’ meaning they are claiming exclusive rights to all uses and all media

channels, including those media channels they do not control and are

not entitled to control, like the Internet." (Emphasis in original)

Wick contends (p. 13):

"e. Because ‘Valero Energy’ is a famous, strong and exclusive mark ValeroEnergy.anyextension

initially represents free speech information about the energy industry, whether

that free information come [sic] from the Complainant or some other free information

source."

"f. When I communicate free speech information about the energy industry using

ValeroEnergy.com, I am really communicating free speech information using the

famous, strong and exclusive mark ‘Valero Energy’, which is used in every other

media channel."

Wick criticizes (pp. 14 - 16) the opinion in Morrison & Foerster,

supra, and a UDRP decision involving Morrison & Foerster and Wick.

Wick relies heavily (e.g. pp. 3, 13, 14, 19, 25) on the majority opinion in

Bruce Springsteen (Sony) v. Jeff Burgar, WIPO

D2000-1532. Wick quotes or paraphrases extensively from portions of that

decision, especially to the effect that: [8]

" ... the users of the internet do not expect all sites bearing the name of

celebrities or famous historical figures or politicians, to be authorized or

in some way connected with the figure themselves. ... The internet ... is a

valuable source of information in many fields, and any attempt to curtail its

use should be strongly discouraged. Users fully expect domain names incorporating

the names of well known figures in any walk of life to exist independently of

any connection with the figure themselves, but having been placed there by admirers

or critics as the case may be."

Wick criticizes (e.g. pp. 17, 20) the dissenting opinion in Bruce Springsteen.

In essence, Wick contends that "US Constitutionally guaranteed free speech is

a bona-fide use of a mark," and therefore the second element of Policy, Paragraph

4.(a) cannot be satisfied here, and the third element is not applicable. Wick

asserts that decisions finding these two elements have been satisfied confuse

the two elements and improperly fold the third element into the second element.

Wick argues that the dissenting view in Bruce Springsteen and similar

views in other decisions have all been modified by the majority opinion in Bruce

Springsteen.

Wick criticizes (e.g. pp. 19 - 20) various other domain name decisions, including

decisions by one or another of the members of this panel. Wick argues (p. 17)

that a newspaper report about "Valero Energy" would be forbidden by those decisions.

Wick asserts (p. 15) "My web sites communicate free information about the legal

system in the form of parody using Internet Domains which ‘corresponded’ to

the famous, strong & exclusive marks of over a hundred law firms."

Wick relies (p. 16, also pp. 7, 8) on Campbell v. Acuff-Rose Music, Inc.,

510 U.S. 569, 582 (1994), for the proposition that inter alia "fair use for

purposes such as criticism [or] comment ... is not an infringement."

Wick iterates (p. 23) he communicates free information about the energy industry

using ValeroEnergy.com. He asserts (p. 23):

"In order for my ‘TownDrunk Parody Web Site Network’ to be successful I communicate

free information about the Establishment in the form of parody using Internet

Domains confusingly similar to famous, strong and exclusive marks of the Establishment."

"A consumer protection advocate is allowed to ‘mess’ with Corporate America

by communicating free information about the Establishment in the form of parody

using hundreds of the Establishments [sic] capriciously coveted Internet Domains.

* * *

"One way for a consumer protection advocate to go on a ‘rampage’ against Corporate

America is to communicate free information about the Establishment in the form

of parody using hundreds of the Establishments [sic] capriciously coveted Internet

Domains."

Wick asserts (p. 25) that "both the Complainant and I want to communicate free

information about the energy industry using ValeroEnergy.com."

Citing Bruce Springsteen, Wick argues (p. 25):

"If an Internet user is sophisticated enough to correctly type in ‘ValeroEnergy.com’

then, it is assumed that an Internet user is sophisticated enough to recognize

a non-official web site with a standard disclaimer the size of Texas."

Wick contends (p. 25) that, on "the off chance" such an Internet user does

not find "the free information they are looking for at ValeroEnergy.com, an

Internet user sophisticated enough to correctly spell ‘ValeroEnergy.com’," could

key in Valero.com or use a well-known search engine.

Wick contends (p. 26):

"a. My ValeroEnergy.com web site does not provide similar commercial services

as the Complainant, simply because ValeroEnergy.com is a non-commercial web

site.

"b. However, both the Complainant (who has operated Valero.com since 1996)

& my ValeroEnergy.com web site do communicate free information about the

energy industry."

Wick states (p. 26) he has never been known as "Valero Energy ", and any one

going to his web site would be looking for "free information about the energy

industry because the ‘Valero Energy’ mark is famous, strong and exclusive."

Wick asserts (p. 26) that the ACAP and Bruce Springsteen confirm there

are "many choices for the Complainant to choose a ‘corresponding domain name’

and, therefore, my use of ValeroEnergy.com does not prevent the Complainant

from doing so." Wick asserts Valero has no interest in ValeroEnergy.com, Valero

had 3.5 years after registering Valero.com to prevent another from registering

ValeroEnergy.com, Wick did not attempt to block use of the mark, and Valero

has reserved "ValeroEnergy.net" as its "corresponding domain name." [9]

Wick asserts (p. 27) his "Trademark Internet Domain parody pages" center around

his "TownDrunk Parody Web Site Network". He analogizes his parody pages to parody

pages in magazines such as Mad Magazines and National Lampoon. Wick argues his

"TownDrunk" logo is placed on each of his Trademark Internet Domain parody pages,

just as magazines contain a logo on their pages.

Wick states (p. 27):

"Some day, I hope to sell hats, T-shirts, other merchandise, advertising and

generic Internet Domains on my TownDrunk.com web site to offset the enormous

debt I have incurred in developing my Tradmark Internet Domain parodies ...

."

In his conclusion, Wick asserts (p.30), inter alia, Valero’s case "rides solely

on the coat tails of my previous cases ... and ... has presented no evidence,

because none exists."

Wick requests (p. 31) that he be permitted to keep ValeroEnergy.com "because

it is an integral part of my ‘TownDrunk Parody Web Site Network’ and

ValeroEnergy.com allows me to effectively communicate free information about

the energy industry and the Establishment."

The response concludes with Wick’s certification, on behalf of all Respondents,

as to completeness and accuracy.

d. Valero’s Reply to Response

The panel did not request Valero’s reply. Rule, Paragraph 12. The panel has

read the reply and decides in its discretion not to take into account any statement

in the reply. The reply does not add any evidence, argument or inference the

panel can not derive from the complaint and the response.

e. Respondents’ Response to Complainant’s Addendum

The panel did not request this response to Valero’s reply. Rule, Paragraph

12. The panel has read the response and decides in its discretion not to take

into account any statement in the response. The response by and large repeats

Respondents’ contentions in their original response.

5. Discussion and Findings

Paragraph 4.(a) of the Policy directs that Valero must prove, with respect

to the domain name in issue, each of the following:

(i) The domain name is identical or confusingly similar to a mark in which

Valero has rights, and

(ii) Respondents have no rights or legitimate interests in respect of the domain

name, and

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

Paragraph 4.(b) of the Policy sets out four illustrative circumstances, any

one of which, if proved by a complainant, shall be evidence of a respondent’s

registration and use of a domain name in bad faith under Paragraph 4.(a)(iii).

Paragraph 4.(c) of the Policy sets out three illustrative circumstances, any

one of which, if proved, shall demonstrate respondent’s rights or legitimate

interests to the domain name for purposes of Paragraph 4.(a)(ii).

a. Identity or Confusing Similarity

Valero has the burden of proving this element and each of the other two elements

of Paragraph 4.(a) of the Policy.

It is beyond dispute that, under United States law, Valero has rights in the

service marks VALERO and VALERO ENERGY CORPORATION. Each mark is the subject

of a registration on the Principal Register of the USPTO. The registrations

issued 17 years and 14 years, respectively, before Respondents registered <valeroenergy.com>.

On this record, it is fair to infer that Valero’s rights in the mark are incontestable

under 15 U.S.C. §1065.

Wick repeatedly agrees that ValeroEnergy.com is confusingly similar to the

mark "Valero Energy Corporation" and "Valero Energy" which is "famous, strong

and exclusive." Wick readily agrees that he relies on confusing similarity in

his parody sites (e.g. "parody cannot be a successful parody unless the subject

material ... is identical to or confusingly similar to a Trademark or Service

Mark"). Also, Wick repeatedly asserts that Valero and Respondents operate in

identical channels of trade.

In light of the foregoing, on this record, the Panel finds that Valero has

carried its burden of proof as to Paragraph 4.(a)(i).

b. Rights or Legitimate Interests

Valero has demonstrated (1) ownership of the two marks, (2) the validity of

the marks, (3) Valero’s continuous use of the marks for years before Respondents

registered the <valeroenergy.com> domain name, and (4) the lack of any

express authorization by Valero of Respondents’ use of the domain name.

It is clear from the USPTO registrations, and from Valero’s complaint, that

the marks afford Valero "exclusive" of the marks for "oil and gas exploration,

production, processing and distribution services."

Valero’s prior use and registrations of the two marks do not alone preclude

Respondents from having any rights or legitimate interests in the <valeroenergy.com>

domain name [10]. The panel must consider

the rights and interests Respondents claim and their purpose in asserting such

rights and interests. Here, Respondents have elected to use "Valero Energy"

as a domain name -- in other words, as an address or an identifier of the source

of the content at the <valeroenergy.com> web site. "Valero Energy" is

not only referred to in the content of the web site page, "ValeroEnergy" is

the address of the web site.

On this record, the question as to rights and legitimate interests resolves

to the issue of whether or not Respondents are within the protection of Policy,

Paragraph 4.(c)(iii), or a similar safe harbor. The core issue is whether or

not Respondents are making a "legitimate noncommercial or fair use of the domain

name." If they are, a second issue is whether or not such use is "without intent

for commercial gain to misleadingly divert consumers or to tarnish the trademark

or service mark at issue."

In the Panel’s view, neither party has focused properly on the core issue of

"legitimate noncommercial or fair use." In the Panel’s view, in light of the

weight of authority, the resolution of this core issue turns on whether or not

the domain name in issue here, which is demonstrably and concededly confusingly

similar, if not identical, to the marks in issue, can be the subject of noncommercial

or fair use separate and apart from the fair use or free speech principles that

may arguably protect the content of the web site whose address is the

domain name.

As for "noncommercial use" of the domain name, it appears that Wick has maneuvered

in creative ways to confect the impression that the domain name in issue is

not an address of a commercial website. The undisputable facts point to the

opposite conclusion. For example:

1. Wick admits that at least from August 1999 to June 2000, the <ValeroEnergy.com>

domain name was registered with his d/b/a NameIsForSale.com as the contact company

[11].

2. All of Respondents’ Internet activities under the NameIsForSale.com d/b/a

included, inter alia, "Offering my programming services and selling my generic

Internet Domains." [12]

3. Wick has openly expressed here his hope that he will someday "sell hats,

T-shirts, other merchandise advertising and generic Internet Domains on my TownDrunk.com

web site to offset the enormous debt I have incurred in developing my Trademark

Internet Domain parodies ... ." [13]

4. Wick’s use in 2000 of three well-known law firm names as "bogus"

d/b/a’s was in each case for the stated purpose of transacting "Internet eBusiness

consulting, web design and programming, bar code distribution computer systems

and web based property design & management systems." These three names also

comprise three of Wick’s domain names.

5. At the web site of <valeroenergy.com>, an advertising graphic for

Register appears, touting "Email Services", "Affiliate Program", and "Business

Resources". Whether such services or products are offered by Respondents themselves

or by Register is not material. The services and products are offered at the

web site in issue.

On this record, it is fair to conclude that Respondents are not making, and

do not intend to make, legitimate noncommercial use of the <valeroenergy.com>

domain name.

As for fair use, in the Panel’s view, it is not the address of the web

site that is protected by free speech principles, but rather the content

of the web site. Both parties tend to merge the two uses in their contentions.

Whatever may be the parodic character of the <valeroenergy.com> web site,

it is and must be in the content and not the address -- i.e. not the domain

name itself. The domain name <valeroenergy.com> itself is not protected.

Bandon Dunes v. DefaultData.com, WIPO

D2000-0431 (citing Compagnie de Saint Gobain. Com-Union Corp., WIPO

D2000-0020, E. & J. Gallo Winery v. Hanna Law Firm, D2000-0615.

As in these cases cited and other situations, Respondents here are openly counting

on initial interest confusion to lead the Internet user to the "parody" site.

Disclaimers and TownDrunk logos appear after the Internet user arrives

at the web site. This is too late. The Internet user has arrived at the site

because of initial confusion on which Respondents openly rely here. To assume,

as Wick does, that Internet users who key in <valeroenergy.com> expect

to find parody at the site is unfounded. Well-known service marks are meant

to identify a legitimate or authorized source of services the marks are ordinarily

used with. The source, here Valero, may be a proper subject of parody, but its

valid service marks may not properly be used as the address for a website purporting

to contain such parody.

The majority opinion in Bruce Springsteen, supra, does not avail Respondents

here. That case centered on the rights of celebrities, famous historical figures

or politicians. This dispute concerns undisputably strong and well-known service

marks. In the commercial world, Internet users generally expect to find information

sponsored or endorsed by the owner of the mark at a web site whose address is

a strong and well-known mark. It is not enough to simply substitute in the Bruce

Springsteen majority opinion words that are not there, and which alter the

thrust of that opinion. It is an inappropriate distortion.

On this record, the Panel finds that Valero has carried its burden of proof

with regard to Paragraph 4.(a)(iii) as to the domain name in issue.

c. Registration and Use in Bad Faith

In appropriate circumstances, bad faith registration and use of a contested

domain name can be inferred from circumstantial evidence. Both registration

in bad faith and use in bad faith must be proved by Valero.

Paragraph 4.(b)(iv) of the Policy sets out an illustrative circumstance of

"evidence of the registration and use of a domain name in bad faith." That subparagraph

provides:

"iv. by using the domain name, you have intentionally attempted to attract,

for commercial gain, Internet users to your web site or other on-line location,

by creating a likelihood of confusion with the complainant’s mark as to the

source, sponsorship, affiliation, or endorsement of your web site or location

or of a product or service on your web site or location."

This illustrative criterion differs from any of the illustrative criteria set

out in Paragraph 4.(c) regarding rights and legitimate interests. There

are, however, some overlaps in considerations.

In light of the undisputed facts here, it is clear that Respondents have intentionally

attempted to attract Internet users to the <valeroenergy.com> web site

by creating a likelihood of confusion with Valero’s service marks as to source,

sponsorship or affiliation of the web site or of a service on the web site.

Respondents openly and enthusiastically rely on the confusion they have created

as to source, sponsorship or affiliation. The question is whether or not they

have done so for commercial gain.

In the panel’s view, in light of the facts recited supra as to Respondents’

past activities and intent as to future activities, it is not reasonable to

reach any conclusion other than Respondents’ activities have been, at least

in part, for commercial gain. Respondents have in the past offered services

under d/b/a’s comprising famous service marks. They have sold goods at a web

site whose domain name has been identical or confusingly similar to a well-know

service mark. Services are in fact offered at the <ValeroEnergy.com> web

site [14]. Respondents "hope" to sell goods

and "generic" domain names at the <TownDrunk.com> web site, i.e. on the

TownDrunk Parody Web Site Network, or which <ValeroEnergy.com> is an "integral

part." By his own admission, "all" of Wick’s Internet based activities under

the d/b/a NameIsForSale.com have offered his programming services and sale of

his "generic" domain names.

Taken together, this integral network which Wick says cannot afford to lose

<valeroenergy.com> is not a purely altruistic, public service. It is commercial

endeavor. Parody is its cover. But as we have seen, the cover is misplaced.

Parody cannot protect the domain name. Parody may, but not necessarily so, protect

the content at a web site. In short, Respondents have been hanged by their own

evidence and contentions.

The Panel finds that, under Paragraph 4.(b)(iv), Respondents have registered

and used <valeroenergy.com> in bad faith.

6. Decision

In light of the findings by the Panel, the Panel decides that Valero has met

its burden of proof with respect to each of the three elements of Policy, Paragraph

4.(a).

Accordingly, the Panel requires that the registration of the domain name <valeroenergy.com>

be transferred to Valero.

David W. Plant

Presiding Panelist

Gordon D. Harris

Panelist

Richard W. Page

Panelist

Dated: August 12, 2001

Footnotes:

1. This apparently refers to a March 14,

2001 email from Valero’s counsel to Wick (Annex 5).

2. Wick says (p. 24) Valero is lying with

regard to web site hyper-links. Wick asserts Valero has presented no evidence

of hyper-links because there is none.

3. At p. 6, Wick asserts legal issues have

caused his d/b/a/ NameIsForSale.com never to be more than a web site outlining

his Internet business expectations.

4. Wick asserts (p. 4) he has registered

"over a hundred law firms & lawyers like FLeeBailey.com in order to communicate

free information about the legal system."

5. Wick includes copies of two letters at

Exhibit I. One letter is a January 4, 2000 letter from Morrison & Foerster,

which states inter alia:

"... the domain names <morrisonandfoerster.com> and <morrisonfoerster.com>

were registered by an entity named Morri, Son & Foerster on October 24,

1999. ... It is our understanding that there is some affiliation between ADS

and Morri, Son & Foerster given that both entities share the same phone

number and share the same post office box."

6. Exhibit J includes State of Colorado (a)

June 2000 certificates of withdrawal of trade name and (b) January 2000 certificates

of assumed or trade name by American Distribution Systems re three well-known

law firms, viz.: "MorrisonHecker", "HuntonWilliams", and "GrahamJames." In each

certificate of assumed or trade name, Wick stated "the kind of business transacted

under such assumed or trade name is: Internet eBusiness consulting, web design

and programming, bar code distribution computer systems and web based property

design & management systems."

7. Exhibit K contains a single page which

appears to reproduce a July 14, 2000 email message from "Brian Meadows", viz.

"Are you interested in selling the domain name www.williamsconnolly.com?",

together with Wick’s response, in part: "WilliamSConnolly.com is not offered

for sale.

8. We quote from the decision itself, not

from Wick’s replication which, inter alia, substitutes "trademark or service

mark" for "the figures themselves."

9. Wick’s Exhibit M comprises print outs

of registration information for ValeroEnergy.com, ValeroEnergy.net, and ValeroEnergy.org.

It appears that, on October 12, 2000, Valero registered both .net and .org domain

names.

10. Valero did not register ValeroEnergy.com

in 1996, when Valero registered Valero.com and when ValeroEnergy.com was available.

Valero registered ValeroEnergy.net and ValeroEnergy.org in October 2000, one

year after Respondents had registered ValeroEnergy.com. This sequence of events

is not relevant to the panel’s considerations under the paragraphs of the Policy

on which we rely in this decision.

11. After this d/b/a was found in Morrison

& Foerster v. Wick, 94 F.Supp.2d 1125 (D.Colo. 2000), to give rise "to

reasonable inference of intent to sell the domain names for a profit," Wick

changed his contact company to another d/b/a, viz.: DefaultData.com. As Wick’s

own Exhibit E shows, his NameIsForSale.com website advertised: "Name the property,

product or service you want to donate, sell, buy or rent."

12. In his response, Wick takes care to

refer only to his desire to sell his "generic" domain names. He asserts he cannot

sell his "Trademark" domain names because they are an integral part of his TownDrunk

Parody Web Site Network. This does not ring true. If, as Wick asserts, the only

route to the Network is by keying in <TownDrunk.com> or one of his "generic"

domain names, his "Trademark" domain names, such as <ValeroEnergy.com>

are not needed to serve as domain names in connection with the Network. On the

other hand, the logical conclusion from Wick’s contentions is that the <ValeroEnergy.com>

domain name and web site are an integral part of all of Wick’s offers of services

and goods on his Network.

13. In Hunton & Williams, WIPO

D2000-0501, the panel found as a fact, as of August 1, 2000, "Respondent’s

<huntonandwilliams.com> and <huntonwilliams.com> web sites "have

advertised products, in the form of T-shirts ..." These are, in Wick’s terms,

Trademark Internet Domain names.

14. The terms and conditions of Respondents’

arrangement with Register are not apparent from this record, other than an agreement

that the provisions of the Policy apply to disputes of this kind. The <ValeroEnergy.com>

web site is apparently set up, serviced or otherwise subject to some agreement

with Register.

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